Some figures
The replies to the questions are summarised in the Excel sheet.
The summary does not claim to be exhaustive or free from errors.
Admissibility of the referral
The proprietor considered the referral as not admissible.
For the opponent and the president of the EPO the referral was admissible.
In the amicus curiae, either the admissibility was not mentioned, or considered positively.
Third Parties Observations
Two TPO were filed, one anonymously. The latter cited a number of decisions and a Y can be inferred as reply to Q1.
The second TPO complained about the introduction of the question of the adaptation of the description by the president of the EPO in his statement on G 1/24.
Parties and president of the EPO
As the parties to T 439/22 and the president of the EPO have a procedural right to file comments, they are considered toghether.
Question 1
The opponent said Y and the proprietor said N.
The president of the EPO said N to Q1, but brought in his reply the necessity of the adaptation of the description and disapproved T 56/21. This led to a complaint in one of the TPO.
Question 2
To Q2, the opponent said Y, even must.
The proprietor divided Q2 in two parts; for the 1st part, in general, the reply is N; for the 2d part the reply is Y when a claim comprises ambiguous terms.
To Q2, the president of the EPO also considered Q2 having two parts, which boil down to the same but said Y to remove inconsistencies and reminded of the necessity of the support of the claims by the description.
Question 3
To Q3, the opponent said N and the proprietor said Y for terms of the claim which are clear.
For the president of the EPO, Q3 appears to be a specific case of Q2 and refers to the answers of Q2.
Amicus curiae
In total 28 amicus curiae have been filed.
Question 1
17 gave a clear Y as answer to Question 1
7 gave a clear N as answer to Question 1
The difference in results lies
- for the Y to Q1 in that 3 amicus curiae had a split view, 1 Y to Art 69 but N to the protocol, 1 Y to Art 69 but only the second sentence, but with the protocol, 1 referred merely to the concept of the ‘broadest reasonable interpretation’
- for the N in that 1 amicus curiae said N to Art 69 but Y to the protocol.
The opponent replied Y to Q1 and the proprietor N.
Question 2
20 gave a clear Y as answer to Q2
1 gave a clear N as answer to Q2
Some considered that a reply was not needed, should be a case by case decision, some divided the question in two parts and considered a different reply depending on ex-parte or inter-partes procedures.
Question 3
4 gave a clear Y as answer to Question 3
14 gave a clear N as answer to Question 2
Some gave a Y with some observations, other did not consider that a reply was needed and other left it to a case by case decision.
Summary of amicus curiae
A majority of Y to Question 1
A majority of Y to Question 2
A majority of N to Question 3
Comments
It is clear that for a majority of professional representatives or associations of professional representatives, Art 69 and the Protocol should be applied when interpreting a claim. Their fear appears to lie in the possibilities of divergent interpretations when it comes to validity between the EPO and national courts, and now the UPC. For one professional representative, Q1 should be rephrased and not mention Art 69. One wonders why.
Industry seems more divided on this issue. Seven replies were given. Four are for a Y to Q1, whereby 1 says Y to Art 69 and N to the protocol and three are for a N. One of the other says N to Art 69, but Y to the protocol. The other one say N to Art 69, but relies to Art 83 and 84 instead.
Some of the replies, consider that Q1 should not be limited to Art 52-57.
For the EPO, it appears important not to become entangled in long discussions during examination and wants to limit the use of Art 69 to oppositions. For the EPO coherence between the claims and the description appears to be of prime importance.
When reading Art 69, the conclusion is that it has little to do with the definition of the claimed invention. It has primarily to do with scope of protection.
When looking at Art 69, it would be possible to interpret it by considering the second sentence, “the description and drawings shall be used to interpret the claims”, to be directly linked to the first sentence, and hence limit its use to the definition of the scope of protection. This interpretation would also be in line with Art 1 of the Protocol. Ignoring the first sentence and only looking at the second sentence does not appear reasonable.
The EPC has instituted the primacy of the claims, cf. Art 84, but this does not mean that the description and the drawings should be ignored.
They play an important role, but at the end of the day, description/drawings and the claims have to be coherent with one another. If this condition is fulfilled, there should be little risk of divergent decisions as to the validity of patents between the EPO and national courts or the UPC. Coherence between claims and description also reduces the risk of creating “Angora cats”.
It will be interesting to see how the EBA’s replies to the three questions.
As the OP is scheduled for the 28.03.2025 in the Isar building, we could expect a reply towards the end of June 2025.
Link to the register.
Link to the Home Page of the EBA for G 1/24.
Comments
6 replies on “Brief summary of the parties’ position and of the amicus curiae in G 1/24”
As it stands, your summary of my proposed arguments is incorrect. Could you please therefore edit your summary to reflect the fact that my brief argued that Q1 should be answered in a rephrased form that does not refer to Article 69 EPC, but instead to a general principle of law?
@ M. Snodin
Any reader of the blog will find your comment. I see thus no necessity to change anything in my summary.
I remind you that it is a brief summary.
You are indeed the only writer of an amicus curiae requesting a rephrasing of Q1 without referrence to Art 69.
I link this position with comments made on other blogs of mine: a document has to be looked at as a whole and claims have to be read in context. The description might allow to give a different interpretation of a claimed feature, than that a skilled person would infer from reading the claim with the will not to misinterpret it.
As the EBA is there to interpret the EPC, I see difficulties for the EBA ignoring Art 69 in Q1, but who knows.
If you want more publicity to your point of view, I allow myself suggesting to write an article in a well know IP Law publication. There are plenty to chosse from.
Mr Thomas,
I do not appreciate the discourteous tone of your reply, which is not at all warranted.
You are free to disagree with my views, just not to knowingly and materially misrepresent them in a publication. This is not just a matter of professional courtesy. I must therefore insist that you correct the misrepresentation in your summary table, for example by including the kind of brief comment / qualification that you have included at many other points in that table.
My suggestion would be to replace “Y” with “interpret document as a whole”. This would then clarify not only my views on Q1 but also the reason why I believe that answers to Q2 and Q3 are not required.
Mr Snodin
You are so highly predictable. It would have been a wonder should you not have felt the necessity to reply to my last comment.
As far as the tone is concerned, this is a reply to yours. It is thus perfectly warranted. I would like to add an old German say (free translation): As you call into the forest, it echoes back.
I do not disagree with your views. I have taken notice of them. However, you should have expected a comment when you request the EBA to disregard Art 69 in Q1.
With your latest comment, readers of the blog will be informed of your views. Why should I modify one iota in my Excel table? Interested readers are perfectly able to put two and two together.
It is not because you claim on the home page of your firm that the ECJ has allegedly taken into account two “concepts” you developed about SPCs, that you can claim that you know what is best for the EPO and its boards. Actually, you should now thank me for advertising your home page. I do however know more modest specialists of SPCs.
Your whole attitude is that of a person having a high opinion of itself, and not tolerating any diverging views.
You should be aware that I have the possibility to delete your comments, or at least redact them. I will only do so as a last resort and as a matter of professional courtesy, I would prefer not to have to do so. You cannot expect more.
I will not get silenced by attrition.
@DXThomas
I have personally found the summary you have posted very helpful and I thank you for that.
An interesting coincidence is that the subject of the preceding post relates to T 2103/22, in which the Board applied the rule of the broadest technically sensible interpretation, without any explicit reference to Art 69 (although the Board mentioned that the description did not disclose anything supporting a different interpretation).
On this topic, I note that in 2018, the USPTO changed the interpretation rule of the PTAB in inter partes review and post-grant review (37 CFR Part 42) to make it consistent with the rule applied during court proceedings, which follows the decision of the CAFC (Phillips v AWH, 2005) and thus different from the broadest reasonable interpretation (“BRI”) applied in the examination of applications and ex parte TTAB proceedings.
My own view regarding G 1/24 is that, at least for ex parte proceedings, the settled principle of the broadest sensible claim interpretation should continue to apply and Art 69 should not apply.
@ Mr Hagel,
Thanks for your comment.
When publishing a brief summary of the amicus curiae, my aim was simply to give the readers a overview of the position of the writers, the parties and of the president of the EPO. There is no judgment of value of the arguments presented, which are quite diverse. A Y to Q1, has many different reasons, and it was not my aim to summarise the respective argumentation.
It is interesting to see the change of position of the USPTO. An alignment with court decisions in, what I would call a complete system, grant-validity and infringement, is always preferable. This is not valid for the EPO which stops at grant or opposition and has no comptence whatsoever in deciding upon infringement.
I agree with you that Art 69 should not be applied in ex-parte proceedings. I would also add, that when the validity is at stake in opposition, Art 69 should as well not be applied. Should an independent claim be amended in opposition, Art 123(3) is to be respected. It is thus only indirectly that, in opposition, Art 69 is to be applied.
Reading Art 69 with a mind wanting to understand it, it says no more than, when it comes to determine the scope of protection, description and drawings have to be taken into account. Art 69 does not say that, when it comes to validity, description and drawings have to be taken into account.
Art 69 does certainly not say that, when validity is at stake in procedures before the EPO, description and drawings have to be taken into account. If national courts, or the UPC, think that description and drawings have to be taken into account when deciding on validity, it is their own right, and there is nothing to say about it. It has to be accepted and respected.