Article 69 of the European Patent Convention states that the extent of the protection conferred by a European patent or patent application is determined by the claims, but that the description is nevertheless used to interpret the claims.
However, the extent to which Article 69 applies to proceedings before the European Patent Office, which only deals with validity, has often been debated.
In particular, the question has frequently arisen whether, and to what extent, the description should be taken into account when interpreting a patent claim for the purposes of assessing its validity.
In appeal case T 439/22, the Technical Board of Appeal identified what it saw as diverging case law on this issue. On June 24, the board referred questions to the Enlarged Board of Appeal in referral G 1/24, seeking clarity on the role of the description in claim interpretation at the EPO.
The outcome of this referral will influence how patent claims are construed by the EPO during both examination and opposition proceedings.
Legal Background
As highlighted by the referring appeals board, Article 69 is the only passage in the European Patent Convention, or EPC, that mentions claim construction.
The meaning of Article 69 of the EPC is set out in Article 1 of the 1973 Protocol on the Interpretation of Article 69 EPC, which states that protection conferred by a European patent should not be understood as that defined by the strict, literal meaning of the wording used in the claims.
However, nor should the claims merely be seen as guidelines, with the scope of protection instead being inferred only from the description and drawings.
Instead, Article 69 is intended to define a position between these extremes.
Although not related to claim construction, Article 84 of the EPC provides further guidance on the relationship between the claims and description. Article 84 stipulates that claims define the matter for which protection is sought, and must be supported by the description.
Articles 69 and 84 of the EPC differ in that the former refers to the "extent of the protection conferred" by the claims of a European patent or application, whereas the latter relates to the "matter for which protection is sought".
It has been argued by some boards of appeal that this difference in wording conveys that Article 69 relates primarily to granted patents, whereas Article 84 is directed more toward the assessment of validity during the prosecution phase before the EPO.1
Further, once a patent has been granted in Europe, the translation requirements differ between states. Claims must always be provided in all three languages of the EPO — English, French and German — to secure grant.
In addition, some countries also require a translation of only the claims into their national language, whereas others require a translation of the entire specification.
Some boards of appeal have cited the lack of a requirement that the description be translated upon grant as justification for requiring that the claims be clear in their own right, without the need to refer to the description.
Furthermore, since nuances may be lost during the translation process, the claims and the description may differ subtly between validation states.
Although these issues were touched on by the Dec. 11, 1989, Enlarged Board decision G 6/88,2 the referring board found that there is ongoing disagreement about whether Article 69 in particular applies only to post-grant infringement proceedings, or also to validity.
Case Background
The referring case, T 0439/22, is an appeal by Yunnan Tobacco International Co. Ltd. against the Opposition Division's decision to reject their opposition to Philip Morris International Inc.'s patent EP3076804.
The patent itself claims a heated aerosol-generating article that comprises a gathered sheet of aerosol-forming material, e.g., tobacco.
During opposition, the opponent, Yunnan Tobacco, argued that the claims lacked novelty in view of a disclosure that said the aerosol-forming material was wound to form a cylinder.
Thus, the opponent's novelty attack depended on the interpretation of the term "gathered sheet" in the claim — i.e., did it or did it not encompass a material that was wound to form a cylinder.
According to Yunnan Tobacco, the term "gathered sheet" did not have a clear and agreed meaning, and it was therefore necessary to turn to the description for interpretation of this term.
Yunnan Tobacco went on to highlight a definition of gathered sheet in the description, which included sheets that were "convoluted, folded or otherwise compressed." Using this definition, it argued that the claims lacked novelty.
However, the Opposition Division disagreed with Yunnan Tobacco, and concluded that the term "gathered sheet" is widely used in the tobacco industry with a clear and agreed meaning that excludes wound cylindrical configurations.
Thus, the Opposition Division saw no need to consider the description, and rejected the opposition.
Referral to the Enlarged Board
Upon appeal, the Technical Board of Appeal observed that the case hinged on whether the description is to be taken into account when interpreting a claim that otherwise seems to be clear. In particular, the board noted that if the term "gathered sheet" were given its usual meaning in the art, the subject matter of claim one would be novel.
If, however, the same term was given the meaning set out in the description, the board concluded that the claim would lack novelty.
The board noted that it is established practice in the national courts of France, the U.K. and Germany to use the description of a patent to interpret claims, regardless of whether the claims are clear in and of themselves.
The board also went on to highlight the February decision of the Unified Patent Court in Nanostring Technologies v. 10x Genomics, which held that "the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim."3
The approach of national courts and the UPC to claim interpretation ostensibly has no bearing on how Article 69 should be interpreted by the EPO.
Nevertheless, the referring board concluded that if construction of patent claims during grant proceedings, i.e., before the EPO, and enforcement after grant, i.e., before national courts, are considered to be two sides of the same coin, it is of "fundamental importance to have a harmonized view on the use of definitions or similar information found in the description when construing patent claims".
Or, to use the board's more colorful analogy, everything seen as an apple after the grant should only be compared with the apples in the state of the art.
However, according to the board, everything that might turn out to be both an apple and an orange in the post-grant world should not only be compared to apples but also to oranges during examination and opposition proceedings.
The board concluded that there is divergent EPO case law on three related, but separate, issues:
- The legal basis for construing patent claims;
- Whether it is a prerequisite for taking the figures and description into account when construing a patent claim that the claim wording when read in isolation be found to be unclear or ambiguous; and
- The extent to which a patent can serve as its own dictionary.
To reach this conclusion, the board examined a total of 100 decisions made since 2008 that dealt with claim interpretation, 19 of which related to examination proceedings, with the remaining 81 being opposition appeals.
To start with the legal basis, a majority of 52 decisions took the view that Article 69 only provides for the description being used to interpret the claims post-grant.
Of the remaining 48 decisions, 26 took the view that Article 69 should be applied both before and after grant, whereas the remaining 22 decisions did not specify a legal basis for claim interpretation.
The board went on to identify further divergence when considering the situations under which the description may be consulted. In particular, the referring board found that the prevailing view was the description may only be used to interpret the claims if the wording of the claims is ambiguous.
However, in some other decisions it was held that the claims should always be interpreted in view of the description, whereas in others, the boards decided that in the case of disagreement between the claims and description, it is the claims that take priority.
Finally, the referring board also identified decisions that concluded that the claims should always be interpreted on their own merits, i.e., without any reference to the description or figures.
Regarding whether a patent can serve as its own dictionary, the referring board identified six separate strands of case law ranging from decisions that found that claim interpretation should never rely on definitions in the description, to those at the other end of the spectrum such as the May 4, 2011, decision in T 620/08.
In this decision, the board stated that being "a legal document a patent may be its own dictionary. It may define technical terms and determine how a skilled person has to understand a specific word when used in the description or the claims."
Tying everything back to the referring case of a gathered sheet of aerosol-forming material, the referring board noted that the different approaches taken by previous boards would result in different conclusions for novelty, and therefore that a referral to the Enlarged Board was necessary to reach a decision.
The Referred Questions
As a means of resolving the alleged divergence in case law, the referring board identified three questions it believes need answering by the Enlarged Board:
- Is Article 69(1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied on the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?
- 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?
- May a definition or similar information on a term used in the claims that is explicitly given in the description be disregarded when interpreting the claims to assess patentability and, if so, under what conditions?
Each of these questions relates to one of the three strands of allegedly diverging case law identified by the referring board. In referring these questions, the board hopes to obtain legal certainty regarding claim interpretation before the EPO.
Nevertheless, as evidenced by the March 23, 2023, decision of the Enlarged Board in G 2/21 (Reliance on a purported technical effect for inventive step (plausibility)), questions referred to the Enlarged Board are not always answered in a clear-cut manner.4
Moreover, there is no guarantee that the Enlarged Board will decide to answer these specific questions. The Enlarged Board is free to rewrite the questions as it sees fit, and it often does.5
A Related Referral?
In addition to G 1/24, another referral to the Enlarged Board on the relationship between the claims and description is likely.
Case T 56/21, which is pending appeal, relates to the EPO's practice of requiring amendments to the description before granting a patent.6
The appeal stems from the Examining Division's July 9, 2020, decision to refuse Roche Diagnostics' patent application No. 15700545.5 on the grounds that the description was not amended for conformity with the claims in accordance with Article 84 EPC.
Although T 56/21 does not address claim interpretation as directly as G 1/24, the two are nevertheless related. For example, if the claims must be clear in their own right without reference to the description, the justification for amending the description for conformity with the claims would be weakened.
In contrast, if the description should always be used to interpret the claims, there would be a greater justification for amending the description to remove any inconsistencies between the two before grant.
It remains to be seen whether the Enlarged Board will accept a referral and what the finalized referred questions would be. Nevertheless, the possibility of two referrals that both relate to the interplay between the claims and the description highlights that this is a hot topic at the EPO.
Takeaways
The outcome of the referral could fundamentally change the role of the description in claim interpretation at the EPO and may therefore have a substantial impact on best drafting practices for applications destined for prosecution there.
Nevertheless, for the time being, given the notable differences in the default approach taken by the EPO compared to national courts — and to early indications from the UPC — highlighted by this referral, drafting claims to be as clear as possible in their own right and avoiding reliance on definitions in the description, where possible, remain good practices.
The different approaches to claim construction at the EPO, the UPC and the national courts also mean that these forums may answer the question of validity differently for the same patent.
Patentees seeking to assert granted European patents must be mindful of such a possibility when selecting a forum, even if the patent has survived EPO opposition proceedings.
On the other hand, opponents may wish to consider which forum provides the best chance for attacking the validity of a patent, in view of the available prior art and the different approaches to claim construction.
Finally, applicants should consider to what extent they amend their descriptions to meet the demands of the Examining Division in view of the impact such amendments could have on claim interpretation post-grant in the various forums.
For example, after grant they would not be able to rely on disclosure present in the application as filed but deleted to meet the demands of the Examining Division.
Crucially, responsibility lies with each applicant to ensure that any amendments made comply with the EPC requirements and do not introduce issues that may affect claim construction in national or UPC proceedings. Therefore, applicants should carefully consider any amendments proposed by the Examining Division before accepting any such proposals.
Footnotes
1 See, for example, T 169/20 dated 23 January 2023 and T 1646/12 dated June 26, 2015.
2 https://www.epo.org/en/boards-of-appeal/decisions/g880006ep1.
3 Nanostring Technologies v. 10x Genomics, UPC CoA 335/2023 dated Feb. 26, 2024.
4 https://www.epo.org/en/boards-of-appeal/decisions/g210002ex1.
5 For example, G 1/21 dated 16 July 2021 and G 3/19 dated 14 May 2020.
6 https://register.epo.org/application?number=EP15700545.
Originally published by Law360
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