EP 3 225 320 B1 relates to a device and method for measuring the straightness of a rod-shaped workpiece
Brief outline of the case
The opposition was rejected and opponent 2 appealed.
The board held that claim 1 as granted lacked N over D10=WO 2017/168324, whereby D10 was not mentioned on the ESR.
Objections of the proprietor about the absence of a valid priority for D10 were not admitted in the procedure under Art 13(2) RPBA.
The proprietor requested
- returning to the written procedure
- staying the procedure in view of the pending referral G 1/24.
Both requests were rejected.
As AR 1 and 2 were not admitted in the procedure, the patent was revoked.
Returning to the written procedure – the proprietor’s point of view
During the discussion on the novelty of claim 1 and before the board’s decision that D10 anticipates the novelty of the subject-matter of claim 1, the proprietor requested to return to the written procedure.
The contested patent was an important patent for a small company. A revocation of the patent would therefore have a considerable negative economic impact on the proprietor.
Furthermore, the discussion on the interpretation of the term “bearing surface” at the OP had come as a surprise to the proprietor due to the position taken by the board, so that it needed more time to consider how best to proceed.
Returning to the written procedure – the board’s decision
The board was of the opinion that a return to the written procedure should only be considered in very exceptional cases and referred to Art 15 (6) RPBA.
In the present case, the board saw no special reasons for this. The novelty of the subject-matter of claim 1 had been in dispute since the beginning of the opposition proceedings.
In particular, the opponent had asserted lack of novelty with regard to a specific feature. That the exact meaning of the term “the support surface” in this feature would have to be discussed in detail at the OP was already foreseeable for all parties. There can therefore be no question of an unusual and surprising turn in the proceedings during the OP.
Furthermore, a return to the written procedure is countered by both the manifest interest of the opponents and the public in general in legal certainty through a speedy procedure, as well as the requirement of procedural economy. A return to the written procedure could delay the decision by months or years and would entail considerable additional work for the board and the opponent.
Stay of the proceedings – the proprietor’s point of view
During the discussion on the novelty of the claimed subject-matter and before the board’s decision that D10 was novelty destroying for claim 1, the proprietor argued that the question of whether and, if so, how the description and drawings of a patent specification should be used to interpret the claims under Art 69(1) referred to the EBA in case G 1/24.
For the proprietor, the outcome case G 1/24 could have a direct impact on the present proceedings, in particular if the EBA was to answer in the affirmative the question of whether Art 69(1) is to be taken into account when interpreting the claims in order to assess the novelty of an invention.
According to the proprietor, the description and drawings of the patent confirmed the proprietor’s interpretation that the force sensor in claim 1 determined a force and not a stress or torsion and that the support surfaces in claim 1 were each one-piece, contiguous support surfaces. These features were not disclosed in D10 and therefore the device in D10 could not anticipate the claimed device.
Stay of the proceedings – the board’s decision
The board was not convinced by the proprietor’s reasoning as to why the present proceedings should be stayed because of the proceedings G 1/24 pending before the EBA
For the board , it was not clear from any of the passages of the patent specification cited by the proprietor that the support surface in claim 1 cannot consist of several parts.
Furthermore, since the description of the patent does not contain any passage giving a clear and generally applicable indication on how the two terms “force sensor” and “support surface” in claim 1 are to be interpreted, the board saw no need to interpret claim 1 more narrowly than it did.
For this reason, too, there was no need to stay the present proceedings in view of the decision in case G 1/24.
Comments
Returning to the written procedure
Art 15(6) RPBA provides that a board ensures that each case is ready for decision at the conclusion of the OP, unless there are special reasons to the contrary.
That loosing a patent might be a problem for a SME is however not a reason for returning to the written procedure. The objection of lack of novelty was there from the beginning of the opposition and the proprietor waited the appeal to question the validity of the priority of the novelty destroying document.
If it was manifest, as claimed by the proprietor by merely comparing the length of the priority document the board could have been more generous. The proprietor argued that the passage justifying the lack of novelty, was not present in the priority document. However, in applying the RPBA the board is not to blame, as it has the discretion to do so.
That returning to the written procedure, could indeed delay the decision by months or years. Whether it would entail considerable additional work for the board and the opponent is not really convincing.
The manifest interest of the opponents and the public in general in legal certainty through a speedy procedure is much more convincing.
Although there were, in the present case, no parallel actions before the EPO and before the UPC, it should not be forgotten that the UPC is very keen on quick decisions. The UPC CoA has made abundantly clear that harmonisation is best achieved by the subsequent judicial bodies taking over its own decision. Any unnecessary delays in the proceedings before the EPO should be avoided.
Stay of the proceedings
The decision draws the attention to a problem which will have to be dealt with by the EBA in G 1/24.
How is a claim to be interpreted if the description does not contain any passage giving a clear and generally applicable indication on how certain terms in a claim are to be interpreted.
There was indeed no reason to postpone the decision in view of the pending referral G 1/24.
Comments
11 replies on “T 367/23 – No return to the written procedure and stay of procedure awaiting G 1/24”
Mr Thomas, as this post seems like a more suitable forum for discussing matters relating to Art 69(1) EPC, let me reply to your comment from 6 September.
DXT: “There is no third possibility”
REPLY: Well, the third possibility related entirely to my understanding of matters. So thank you for telling me what it is that I do or do not understand. That is really helpful and not at all insulting.
DXT: “My position is quite simple: if a claim is clear for the skilled reader, there is, as such, no need to interpret the claims on the basis of the description according to Art 69(1), and even less according to the protocol on interpretation.”
REPLY: I indeed understood this to be your position. But what I am trying to understand is not WHAT you believe but instead WHY you hold that view. To reiterate, I am trying to understand how your position can be derived from the provisions of the EPC which, to reiterate, include a provision which states that “the description and drawings SHALL be used to interpret the claims”.
DXT: “If the description gives a more restricted definition than that the skilled person gains directly and unambiguously when reading the claim, then this restricted definition cannot be read into the claim in spite of what Art 69(1) might say. The same applies in the other direction, if the description allows a broader interpretation of the claim.”
REPLY: That is no excuse not to apply Art 69(1). If the description of a pending application contains a specific definition of a term used in the claims, then the EPO should (under Art 84 or Art 123(2) EPC) insist upon the inclusion of that definition in the claims. Regardless, for the purposes of interpreting the terms used in the claims, it cannot be correct to ignore the context provided by the description and the drawings, especially in view of the second sentence of Art 69(1) EPC.
DXT: “If checking the claims against the description, and insuring their mutual coherence, is not interpreting the claim in the light of the description as required by Art 69(1), what is it then?”
REPLY: I am not sure whether to take this question seriously. This is because checking the description against an acontextual interpretation of the claims is most certainly NOT using the description to interpret the claims. Indeed, it is the precise opposite, namely imprinting upon the description an interpretation of the claims that has been arrived at by IGNORING the second sentence of Art 69(1) EPC.
DXT: “You seem to willingly forget that the EPC has instituted the supremacy of the claims, contrary to national “integrated” systems. This is best to been seen in the light of the obligation to file a translation of the claims in the two other official languages of the EPO in order to obtain the grant of a patent or its maintenance in amended form.”
REPLY: Please check the original derivation of the principle of the supremacy of the claims. I think that you will find that it derives from the first sentence of Art 69(1) EPC. As far as I am aware, there is nothing in the EPC, as interpreted according to the provisions of the VCLT, that would make it legitimate for the EPO to interpret the claims by applying only one half of the provisions contained in Art 69(1) EPC. I also fail to see how the original decision of legislators to separate patent grant from patent enforcement could have a bearing on application of Art 69(1) EPC (as opposed to the determination of equivalents, which is an essentially impossible task in the absence of the identification of one or more specific embodiments of an invention that are alleged to infringe by equivalence).
DXT: “Trying to conjecture what else could fall under the scope of the claim is not part of the duty and the competence and the EPO.”
REPLY: I do not think that it is too much to ask for the EPO to interpret the terms of the claims in a CONTEXTUAL manner, ie taking into account the whole of the disclosure of the patent specification, as well as common general knowledge.
DXT: “Furthermore, the whole line of case law established over the years when it comes to what is “directly and unambiguously derivable” from the original disclosure would, in my opinion, be jeopardised should Art 69(1) be systematically applied in all procedures before the EPO.”
REPLY: There is no reason to believe that a CONTEXTUAL interpretation of the claims would be any less compatible with a strict assessment under Art 123(2) EPC than an interpretation according to the EPO’s current (essentially acontextual) approach. This is because the ultimate aim of the interpretation would still be to understand PRECISELY the subject matter that is disclosed.
DXT: “We are thus plainly of a different opinion, and that’s it. We already came to this conclusion when dealing with Art 84, support.”
REPLY: Sure, we can agree to differ. But there is likely to be a lot of common ground between us. For this reason, as well as with the aim of keeping the discussion as much as possible on neutral ground, I have attempted to understand the LEGAL BASIS for your views, namely HOW you derive those views from the EPC. In this respect, and despite our many exchanges, it seems to me that the legal basis for your interpretation of the EPC is the one topic that you never seem to want to discuss / debate in detail. Why is that?
Doubting Thomas,
I would respectfully urge you to stick to the topic at stake. There is not one word about Art 69(1) in the present blog.
There is no reason to mix the issues. You might want to come back on my positions on Art 69(1), but this is not the place here.
I have the possibility to delete your comment. I will however not do so, but I refuse to reply in substance to your comment here.
You might be convinced of your position and have difficulties in accepting a different opinion, but do so at least at the right place.
I have expressed my positions on Art 69(1) in a clear and concise way based on the case law of the boards with its great variation on this topic.
You are free to disagree, and consider that some or all boards do not apply the EPC as you would like it to be applied, but I am not the right addressee for this plea. For example, you could send an amicus curiae brief to the EBA in G 1/24.
Even if you would repeat your comment at the right place, I will not reply anyway as I will not be convinced by attrition.
For the surplus, I agree with Mr Hagel.
Repeating the same stance like a Tibetan praying mill does not bring matters forward. As far as I am concerned and whether you like it or not, the topic on Art 69(1) is exhausted.
Mr Thomas, my persistence on this matter has clearly been an exercise in futility. You can rest assured that I will persist no more. This is because I have now located, from another source, the information / analysis that I was seeking.
Prior to today, I had been remiss in not reading the interlocutory decision in T439/22. However, point 3.2 of that decision answers my questions, as it assesses the legal basis for the various approaches to using (or not using) Article 69 EPC to interpret the claims.
No doubt you will disagree with T439/22 on most, if not all points. Nevertheless, I find it hard to locate any serious faults in the analysis of legal basis for the various approaches set out in EPO case law. I also find myself in agreement with the sentiments in points 4.1 and 4.2 of T439/22. Using different rules in different fora to interpret the claims of the same patent cannot end well.
@ Doubting Thomas
I should not reply to this comment as I urged you not to ignore the purpose of the blog in which you reply.
I will make an exception here, but be assured that if you post a comment bearing no relation with the topic of the blog, it will be deleted.
In point 3.2, the referring board simply showed the evolution of the case law, clearly diverging on the point of the application of Art 69 (1) and of the Protocol.
I have no reason to disagree with the referring board on this divergence of case law and I agree that a referral to the EBA is needed. I have been pleading for such a referral for a long time.
I would just like to observe that G 6/88 is a rather old decision of the EBA which has been superseded by a series of further decisions of the EBA in which the notion of “directly and unambiguously derivable”, i.e. the novelty test has been defined as applicable in a variety of situations.
The novelty test is applicable in order to decide:
– when applying Art 123(2)
– whether priority is validly claimed [Art 87], cf. G 2/98
– if a divisional application is a true divisional [Art 76(1)] , cf. G 1/05 and G 1/06
– in case of disclaimers, whether the disclaimers
o are undisclosed in the original specification, cf. G 1/03, G 2/03, G 1/16
o are disclaiming part of the invention, cf. G 2/10
I find it strange, or at least misplaced, that a given board has taken the liberty of reprimanding a whole series of other boards, see the penultimate paragraph in Reasons 3.2.3.
In order not to jeopardise the achievements of these decisions, I am simply pleading for the line of case law which has not followed G 6/88.
As far as Reasons 4.1 and 4.2 are concerned, I understand the point of view expressed by the boards. It could indeed be that, theoretically European patents could be granted that give protection for subject-matter that was already known in or rendered obvious by the prior art.
I could support the referring board if he had shown such cases, but I do not know any European patent which has been granted with subject-matter that was already known in or rendered obvious by the prior art, just because of a misinterpretation of the description.
If this should be the case, then examination was sub-optimal. In view of the number of patents revoked or maintained in amended form after opposition this is the case in roughly 80% of the oppositions finally decided by a board.
As far as apples are concerned, in view of the set-up of the EPC, with grant and litigation occurring in two different systems, I would claim that grant is one apple and litigation is not an apple but an pear or an orange. The two systems have been separated, and a link between the two was needed, i.e. the protocol on interpretation.
This protocol should not be applied at the EPO, unless there is a political will for the EPO to grant more or less anything and to leave the UPC to decide for the EPO.
@Doubting Thomas
Your position that Art 69 EPC should be applicable to the assessment of validity has no basis in the language of Art 69. Art 69 relates to the assessment of the extent of protection conferred by a patent. The settled case law is that insofar the EPO is concerned, it is only applicable to assess compliance of post-grant claim amendments under Art 123(3).
It is true that courts dealing with both infringement actions and counter-actions for revocation apply Art 69 for validity assessment (this is the case in UPC decisions), but this is necessary to avoid the « angora cat » paradox of a patent owner seeking broad interpretation for the infringement part and narrower interpretation for protecting the patent against validity challenges. This context is specific and different from the validity assessment by the EPO.
As to the EPO, the rule of interpretation to be applied for validity assessment is that a claim should be given its broadest technically sensible meaning. This is the principle exposed in section I.C.4.1 of the CLB (release 2022, unamended in the 2024 release), entitled « General rule of interpretation », as « a well-established principle laid down by the boards’ case law. »
Many recent decisions routinely refer to the rule of interpretation exposed in CBL: T 1705/17, T 1553/19, T 1628/01, and quite recently T 1208/21 of 9 April 2024 , which stresses in Reason 2 that it is the shared approach of the Boards of appeal :
« Reason 2. A claim which is clear by itself should be interpreted as broadly as technically reasonable in the relevant technical field. This represents the commonly accepted approach on claim interpretation by the Boards of Appeal when assessing inter alia the patentability requirements of Articles 54 and 56 EPC, as was also confirmed in recent decisions, for example T 1628/21, reasons 1.1.2 and 1.1.7, or T 447/22 reasons 13.1 (see also the case law cited in these decisions). »
This is stated again in Reason 3.3 of T 0367/23 reported on this post. Here is an English translation :
“3.3 The board is not concerned by the reasoning behind the proceedings in G 1/24. None of the passages in the patent specification cited by the patent proprietor clearly show that the support surface in claim 1 cannot consist of several parts.
The term “the support surface”, which is clear in itself, was interpreted by the board only as broadly as is technically reasonable. The specific embodiment of the three support surfaces (5, 6, 7) shown in Figure 1 cannot be used as a basis for a restrictive interpretation of the term “the support surface” in claim 1. In particular, the description lacks a clear teaching that this specific embodiment of the support surfaces is absolutely necessary for the device of claim 1.”
It is stating the obvious, but the description and drawings are always used and required anyway to gain understanding of the terms of a claim, without any need to refer to Art 69. This is explicited in the other parts of CLB section I.C.4.1. In addition, a very concrete illustration is the requirement that numerals used to connect the description to the drawings be mentioned in the claims. Such principle has not so far required the application of Art 69.
As to G 1/24, I find truly astonishing that the referring decision T 439/22 is solely focused on the application of Art 69 EPC to validity assessment, and in so doing it utterly ignores the well settled principle according to the CLB case law. Which leaves it completely in doubt whether the decision challenges or approves this principle.
In addition, decision T 439/22 presents very thin reasoning for what would amount to a major amendment of the EPC and of the current practice of the EPO which applies Art 69 in accordance with its language i.e. the assessment of the extent of protection of granted claims for compliance with Art 123(3).
There is in my view an error in principle in decision T 439/22, which consists of underestimating the differences between the context of claim interpretation before the courts and in EPO proceedings and attempting to unify the rule of interpretation irrespective of the context.
In an infringement action also including a counter revocation action, the issue of claim interpretation is focused on the terms of a claim in dispute between the parties. These terms, which are likely critical for the outcome, are dependent on the specific object the infringement of which is alleged. They are defined in concreto.
In contrast, during examination of an application before the EPO, there is no object to which the claimed subject matter can be compared. The issue of claim interpretation arises in abstracto. This justifies for the rule of interpretation to be as simple and general as possible, as is the case in CLB section I.C.4.1.
Another major difference between the two contexts relates to the available resources. In this respect, the context of the examination of applications is characterised by drastic time limits and production requirements imposed on examiners, far remote from the resources typically available for court proceedings.
It is of note that the referring decision T 439/22 recommends in Reason 6.2.5 a radical change in the examination procedure, consisting of adding a preliminary step to check that the terms of the claims are fully justified with regard to the description and drawings. This is consistent with the Board’s objective of unifying claim interpretation rules. Such an additional step would however entail a substantial overload for examiners, totally unrealistic in view of their above-cited time constraints. In addition, it would be certain to generate frequent if not systematic disagreements with applicants, with the result of uncertainties and increase of costs and prosecution times.
Mr Hagel,
You replied on this blog to a comment of Doubting Thomas. I just explained that Doubting Thomas’ comment is misplaced and that I would not reply to it in substance.
For the rest, it appears that you agree with my position on the application of Art 69(1).
The context in litigation and in examination is totally different and is due to the history of EPC.
A change of paradigm at the EPO as far as Art 69(1) is concerned would jeopardise the long lasting line of case law on what is “directly and unambiguously derivable”. This concept should not be given up.
What can be done in a “integrated system” is not necessarily applicable at the EPO.
Mr Hagel, with the greatest of respect, I think that it is important to draw a clear distinction between, on the one hand, legal basis in the EPC and, on the other, conclusions from case law (including “settled” case law) of the EPO Boards of Appeal.
Whilst case law might outline a (purported) legal basis, decisions of the Boards of Appeal on fundamental issues, such as claim interpretation, are often somewhat lacking when it comes to conducting a detailed and rigorous assessment of the legal basis for their conclusions. Point 3.2 of T439/22 does a good job of highlighting this issue.
With regard to the rest of your comment, I will not respond in detail, other than to repeat what I said to Mr Thomas, namely that using different rules in different fora to interpret the claims of the same patent cannot end well.
My reply mentioning Reasons 3.2 in the referring decision T 439/22 apply as well to your reply to Mr Hagel.
Mr Thomas,
I am pleased that we agree. And I have noted your invitation to Doubting Thomas to file an amicus curiae brief to the EBA in G 1/24. This is an interesting suggestion I might personally consider.
I do not need to be convinced, but the EBA! It is as simple as that!
Mr Thomas, one of your recent comments raises some interesting issues that are not inextricably tied to Art 69(1) EPC. I therefore hope that you will not mind if I comment upon those issues.
Specifically, you comment that “G 6/88 is a rather old decision of the EBA which has been superseded by a series of further decisions of the EBA in which the notion of “directly and unambiguously derivable”. This raises the following questions.
Firstly, is the age of an EBA decision at all relevant, especially if that decision has never been (explicitly) overruled by the EBA?
Secondly, is it even possible for an EBA decision of a second topic to implicitly overrule an earlier EBA decision on a first topic?
Thirdly, if implicit overruling is possible, how is legal certainty guaranteed? That is, what criteria must be met for the public to be in no doubt that a later EBA ruling has implicitly overturned an earlier EBA ruling?
I must admit that I am sceptical about the concept of implicit overruling of an earlier decision. If it is clear that a later decision overturns an earlier one, then this should be made explicit in the later decision. Of course, it is possible that the EBA might not realise the full implications of their later decision. In that instance, however, I would say that, before diverging from the earlier EBA decision, the Boards of Appeal have an obligation to make a further referral to the EBA to clarify the matter. Would you agree?