EP 3 388 490 B1 relates to decorating natural leather. It has not been opposed at the EPO.
Brief outline of the case
The proprietor, Agfa NV, sued for infringement of EP 3 388 490 B1 by a group of companies all belonging to the Gucci group before the LD Hamburg of the UPC.
Gucci requested to dismiss the infringement action and filed a counterclaim for revocation.
The LD Hamburg came to the following decision, UPC_CFI_278/2023:
I. The infringement action is dismissed.
II. The counterclaim for revocation is dismissed.
III. Agfa shall bear 40% and the Gucci shall bear 60% of the costs of the proceedings.
IV. The value of the proceedings is set in total at € 2.500.000, of which € 1 Mio is attributable to the infringement action and € 1.5 Mio to the counterclaim for revocation.
The case is interesting in that the LD Hamburg found that parts of the description in the patent were not any longer in accordance with the claimed subject-matter.
The disputed facts between the parties
The parties disagreed on the interpretation of the feature “achromatic colour different from black” of the base coat in the independent claims 1 and 10.
According to para [0021] of the description, white, grey and black were achromatic colours and achromatic colours had no dominant hue, meaning that all wavelengths would be present in approximately equal amounts.
Such a colour might be obtained, e.g. through the use of a white pigment such as titanium dioxide, but also by adding additional pigments for slightly altering the colour of the base coat.
Agfa’s point of view
Agfa was of the opinion that adding a small amount of chromatic pigment to a large amount of achromatic pigment would generally still result in an achromatic base coat. It argued that the patent did not only seek protection for “perfect” achromatic colours or indistinguishable variants thereof.
Rather, the patent also sought protection for base coats with a small amount of chromatic pigments, which include off-white or ivory white colour. Agfa relied, in particular, on para [0029] and example 3 of the patent.
Gucci’s point of view
Gucci interpreted para [0021] of the patent in a way that it would teach that a colour is achromatic within the meaning of the patent if it had a flat spectral response or, if the spectral response was not perfectly flat, if the deviations from the perfectly flat spectrum were such that the difference between the colour in question and the nearest reference achromatic colour with a perfectly flat spectrum line would not be perceptible to the average observer.
The LD’s interpretation of the claim
As a starting point the LD had to decide whether the term “achromatic” referred to the pigment or the base coat as a whole. The LD came to the conclusion that the base coat as a whole had to have an achromatic colour which ought to be different from black.
The Court construed the feature “achromatic” according to the definition given in the description in para. [0021] of the patent, based on the principle that a patent may be used as its “own lexicon” (for instance, UPC_CFI_14/2023, 16.07.2024, CD Munich, Regeneron v Amgen).
The LD noted that in reply to the search opinion, Agfa deleted “chromatic colour” from the wording of original claim 1, in order to overcome an objection of lack of N based on US 2010/233441.
One important question was then whether an ivory base coat could be considered achromatic. Such a base coat was disclosed in para [0029]
According to para [0029], the base coat contains both a pigment for providing a chromatic colour and a pigment for providing an achromatic colour different from black. For example, one could compose a base coat containing a white pigment and one or more colour pigments to provide e.g. an off-white or a pale clay colour, i.e. an ivory base coat.
Example 3, para [0170] to [0178], disclosed a method for decorating natural leather with a decorative image according to the invention wherein the base coat contains a pigment providing a chromatic colour to the base coat applied on a chrome tanned ’wet blue’ leather.
The LD held that in view of the definition of achromatic given in para. [0021], para [0029] and Example 3 were not any longer falling within the scope of the granted claim.
For the LD Hamburg, an “achromatic colour different from black”, meant a colour with no dominant hue, where all wavelengths were present in approximately equal amounts, i.e. white or grey.
Base coats with even a chromatic tinge, ivory, pale clay, were excluded from the claim scope.
The LD held 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.
Comments
The present case before the UPC illustrates the necessity of adapting the description to bring it in alignment with the claimed subject-matter. Para [0029] and Example 3, disclose a base coat having a definite hue, and hence do not correspond to the definition of achromatic given in para [0021].
When specifications in the description that are not consistent with the granted claims cannot
serve as a basis of a broad interpretation of a claim, it implies directly and unambiguously that the description has to be aligned with the claims. This simplifies the work of any post-grant judicial authority having to decide on validity and/or infringement.
This does however not mean that para [0029] and Example 3 should have been deleted, they should at least having been marked as defining embodiments not falling under the claims as granted.
Following the filing of amended claims, in which chromatic was deleted in original claim 1, the ED proceeded directly to grant. The ED never checked whether claim 1 as granted would be supported by the description as originally filed.
One could also consider that Agfa wanted to build a kind of Angora cat. Although the granted claim was limited to achromatic base coats, it still wanted to claim that some chromatic pigment could still be present in the base coat.
This case before the UPC shows that it is important for the EPO to ensure that, at grant, description and claims are aligned on one another.
We will have to wait for the publication of G 1/24, to see whether at the EPO, the patent can be its own lexicon.
Acknowledgement
My thanks go to Mr Schilling, LQJ at the Hamburg LD, judge-rapporteur in the Agfa/Gucci case. My attention was drawn to this case during a seminar organised on 05.06.2025 by CEIPI for the two years of the UPC. His presentation was about claim construction, inventive step and added subject-matter.
Comments
4 replies on “EP 3 388 490 B1- LD Hamburg – Order UPC_CFI_278/2023 – Parts of the description do not tie up with the claimed subject-matter”
Dear Daniel,
Thank you for the analysis and interesting case.
However, I do not understand this:
“When specifications in the description that are not consistent with the granted claims cannot
serve as a basis of a broad interpretation of a claim, it implies directly and unambiguously that the description has to be aligned with the claims.”
I do not understand this passage.
If the description was in conformity with the claims, “achromatic color different from black” would still not cover Base coats with even a chromatic tinge, ivory, pale clay. Therefore, the scope of the claims seems to be the same whether the description is in conformity with the claims or not.
Am I missing anything?
Kind regards,
Dear “Belgian observer”,
Thanks for your comment.
I think that you start with the wrong postulate when you say that the description is in conformity with the claims, even if you leave in the description the possibility that base coats can have a chromatic tinge.
If infer from your comment that, should the description not be adapted, it does not really matter as the claim has been limited to achromatic base coats.
What you are actually suggesting, is that there is no need to adapt the description to the claims.
I know that it is something representatives do not like.
In the present case, since the description had not been adapted, Agfa has tried to extend the scope of protection to something which it had willingly excluded from the claims to avoid a novelty objection.
The LD Hamburg did not play along with Agfa when it stated 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”. The term used here is not support but consistency. The end result is nevertheless the same. The description contained statements which were not consistent with the granted claims.
The LD Hamburg considered indeed that the scope of protection did not extend to a base coat with a chromatic tinge.
If the description would have been adapted, Agfa could not have tried to expand the scope of protection as it did.
The situation is somehow similar to that when the subject matter of a dependent claim is added to an independent claim in order to overcome an objection based on the prior art available, i.e. to limit the independent claim.
The subject-matter of a dependent claim is in general disclosed in the original description as being optional or preferable. Once the subject-matter of the independent claim has been limited with what originally optional or preferable, it is not correct to leave in the description that the subject-matter of the original dependent claim is still optional or preferable.
The scope of protection of a limited independent claim cannot be enlarged by taking advantage of aspects which are not mandatory according to an unamended description.
This is what Art 84, support, requires from the EPO: do not give the possibility to the proprietor to create an Angora cat in case of infringement.
The same applies mutatis mutandis when certain originally disclosed embodiments are not any longer covered by the granted claims. Those embodiments do not have to be deleted, but they have to be marked as not corresponding to the granted claims.
The day Art 84 is amended and the term support is not any longer found in it, then the description will not have to be aligned with or adapted to the claims.
Kind regards
Dear Daniel
You say that aligning the description with an amended claim serves to simplify the work of any post-grant judicial authority having to decide on validity and/or infringement. In this example, the post-grant judicial authority took very little time to determine that the embodiment described at para [0029] (and example 3) was no longer an embodiment of the invention set out in the amended claim. As “Belgian observer” observes, the scope of the claim is quite clear despite the description not being in conformity. On what basis then could an examiner object to such non-conformity?
HKJ
Dear HKJ,
My reply to you is the same as that I have given to “Belgian observer”: the basis for an examiner to object such a non-conformity is found in Art 84, support.
The day Art 84, support, will be abolished, I will agree that the description will not any longer have to be adapted to the description. This is the role given to the EPO by the legislator. But then, a kind of file wrapper estoppel should be introduced. You cannot have your cake and eat it.
The duty given by the legislator to the EPO to adapt the description to the claims has to be carried out irrespective of what a post-grant judicial authority may do or not. The simplification of the work of a post-grant judicial authority is a consequence of the alignment of claims and description, not the reason. The reason lies in the EPC, not in the UPCA.
Adapting the description to the claims, or bringing both in concordance, is in my opinion, the best, if not the only way to avoid creating Angora cats.
Or should I take it that you are in favour of Angora cats, or at least to open the door to proprietor’s to attempt creating Angora cats? The temptation to create Angora cats has to be nipped in the bud. Art 84, support, is the mean to achieve this aim.
Whatever we might think about adaptation of the description we should not forget that the EPC has been conceived as a treaty just granting patents. That patents have a life after grant goes without saying, but at the moment of grant the patent should be in an optimal form. This includes adaptation of the description to the claims. The recent entry in activity of the UPC has not changed this overall picture.