CASELAW-UPC – reviews of UPC decisions

Indeed the same is true in other countries. The clue is in the name: “equivalents”. They are equivalent to what is explicitly claimed.

I am not sure how Mr Thomas arrives at the conclusion that equivalents can only be taken into account if the claims are amended to refer to them.

Doubting Thomas

You are quite correct that the EPO has gone its own way on claim interpretation for 45 years. However, that is not the full story.

Firstly, the fact that we now have a supranational court serves to emphasise any divergence in approach between the EPO and the courts of the EPC Member States. Combined with the speed with which the UPC issues its decisions, such divergence in approach, which was always highly unsatisfactory, now becomes intolerable.

Either a patent is valid in the EPC Member States or it is not. Different results in different fora that are bound by the SAME law should never be the result of fundamentally incompatible interpretations of the same provisions of that law. This can only lead to the creation of Angora cats and other forms of injustice.

Secondly, whilst “the principle of the primacy of the claims” indeed derives from Board of Appeal case law, it is a relatively recent innovation of certain Boards and has not been universally applied. On the other hand, looking at the submission in G 1/24 from the President of the EPO, it seems that he believes that “the principle of the primacy of the claims” is the be all and end all when it comes to interpreting claims at the EPO. I would therefore more strongly associate that principle with the EPO President than the Boards as a whole.

Doubting Thomas

Mr Thomas, it seems to me that one of your primary objections to interpreting claims in accordance with Article 69 EPC is that this will somehow drag equivalents into the assessment of patentability, and therefore lead to the demise of the EPO’s “gold standard” uniform concept of disclosure.

However, I would ask you to consider the following questions.

1) Is it really the case that interpreting the claims in the light of the description will inevitably lead to equivalents infecting the assessment of patentability?

2) Consider how patentability is assessed in jurisdictions that do take equivalents into account for infringement. Do those jurisdictions consider equivalents when assessing patentability (other than as a defence to infringement)?

Looking at the evidence, it seems to me that the clear answer to both of these questions is “no”.

Looking at the amicus curiae in G 1/24 which support interpretation in the light of the description, none of them advocates considering equivalents for the assessment of validity. Indeed, I have seen one amicus that advocates interpreting the claims in accordance with the uniform concept of disclosure, thereby allowing the claims to be interpreted in the light of the description without giving rise to any concerns regarding Article 2 of the Protocol to Article 69 EPC.

Also, as Anonymous has pointed out (with reference to the UK), courts that interpret the claims in the light of the description and drawings do NOT consider equivalents for the determination of validity, which is instead assessed relative to the “normal” claim scope (ie EXCLUDING equivalents).

Concerns about equivalents are therefore a paper tiger of your own creation. Whilst you can continue fighting and raging against that tiger, you will only be arguing against imagined opponents.

It would be a lot more interesting if, for the sake of argument, you were to accept that the answer to both of questions 1 and 2 above is “no”. This is because it might help the rest of us to understand what other fundamental objections you have against interpreting the claims in the light of the description, and why those objections are powerful enough to overcome the contrary arguments advanced in the majority of amicus curiae in G 1/24.

I would also be very interested to learn what you make of the argument in one amicus that “the principle of the primacy of the claims” is incompatible with the uniform concept of disclosure.

Anonymous

The reason the EPO likes the “primacy of the claims” is because it enables them to kill patents efficiently. If a claim is always interpreted devoid of any context, it is easy to argue that any minor amendment adds matter when the context of the description is ignored and so patents can be revoked at will. The problem is the Boards have also developed case law where they have found that using the description or drawings to interpret the claims provides another easy way of killing a patent. In this regard, see, for example, T 1360/13. Trying to reconcile these approaches is impossible. The EPO has tied itself in knots by always taking the least applicant-friendly approach at every opportunity. This leads to mental contortions ascribing claims with a special status which makes them the single exception in all of law. This is nonsense. Words mean the same thing regardless of whether they are in the claims or the description. Patents are unitary documents and must be interpreted as such. It is clear that any position to the contrary is simply dogmatic and intellectually dishonest.

Doubting Thomas

Whilst I understand your frustrations with the apparent inconsistencies, I think that those inconsistencies were more likely than not created inadvertently and with the best of intentions. As I see it, the problem now is that those good intentions are getting in the way of an objective assessment of the law (and the consequences of adopting specific interpretations of the same). In essence, it is a kind of wilful blindness. And one that is seemingly impervious to reason and logic.

Daniel X. Thomas

@ Anon 3,

To state that the EPO does like the “primacy of the claims” because it enables them to kill patents efficiently is derogatory to say the least.

T 1360/03 is a special decision. As the board considered that the drawings of the patent, amended during the PCT procedure, were infringing Art 123(2), the proprietor filed AR 9 in which all drawings were deleted. The board rightly considered that without the drawings the teaching of the description is more general, and the ambiguities in the claim were resolved in a more general way. This results in an extension of the protection conferred by the patent. It is difficult not to agree.

What the boards have made clear is that the description cannot allow a feature in the claim to have a different definition from that given by the skilled person to a feature of the claim.

This is exactly what the board had in mind in T 1360/13, Reasons 4.12, the last two §. If description allowed a potentially restricting interpretation of a feature in the claim, it cannot be removed from the patent without infringing Article 123(3). This is quite coherent.

Words can mean the same thing regardless of whether they are in the claims or the description, provided that the same words are used in the claim and in the description.

Patents are only unitary documents when the same words are used in the claim and in the description. The description cannot allow a different interpretation of a feature in the claim. There is nothing dogmatic in this position and any attempt to give a feature in a claim a different interpretation to that derivable from the plain wording of the claim is intellectually dishonest from the side of the applicant/proprietor.

By the way, this is the prime reason why the description has to be adapted to the claims. But this is another can of worms, I do not wish to open here.

Daniel X. Thomas

@ Doubting Thomas

My stance on equivalents is no more than an example of what could happen with the notion of directly and unambiguously, should the interpretation of the claims in infringement be the same as for validity, which is what you and some others manifestly want.

The one amicus stating that “the principle of the primacy of the claims” is incompatible with the uniform concept of disclosure, is your own one. I will leave the EBA to answer this point. By bringing this point, you still confuse extent of protection and validity of the claims. You think your argument is powerful, I think it is failing ab initio.

For the rest, I will certainly not jump over every stick that is held out to me. Your questions 1 and 2 will be left unanswered, not because I do not have a reply, but I have made clear what I think and the reasons for it.

As you, and other, are constantly wanting replies of questions you find relevant, I fail to have seen any reply taking into consideration the dichotomy between granting/validity and infringement. Those are two distinct topics and the fathers of the EPO have clearly set the scenery, that one has to be apprehended differently than the other. Otherwise there would neither be an EPO nor a UPC.

Anonymous

Arguing that the primacy of the claims is incompatible with the uniform concept of disclosure has nothing to do with confusing validity and infringement. If the claims in a pending patent application mean one thing when the application is being prosecuted at the EPO where the claims are read devoid of any context, but mean something different when that same pending patent application is used as prior art where the EPO will insist that the claims be read together with the description, something does not add up. That is not a uniform concept of disclosure. A document means what it means to the skilled person regardless of why we are reading it. This should not be a controversial statement but I suspect you might disagree.

Daniel X. Thomas

@ Anon 1 and Annon 2,

If the same interpretation criteria applies to validity and infringement, then, in all logic, why should non-disclosed equivalents not be claimed? At least the situation would be clear for all third parties.

In the famous “pemetrexed decision” (Actavis/Eli Lilly, on infringement by equivalence, Lord Neuberger and later Sir Roin Jacob in presence of Lord Neuberger considered that the examiner was “manifestly wrong” when he raised an objection under Art 123(2) against a generic claim for pemetrexed.

As far as the examiner was concerned, the only example disclosed related to pemetrexed disodium, so that the examiner had no choice but to rise an objection of added matter, in view of the case law of the EBA in matters of what is directly and unambiguously derivable.

Has now the penny dropped?

With due respect, I claim that both Lord Neuberger and Sir Robin Jacob were “manifestly wrong” as they blatantly ignored the case law of the EBA in matters of what is directly and unambiguously derivable.

What the UK, or any national court of an EPC Contracting State, or the UPC, might decide in matter of infringement by equivalents is of no interest to the EPO as it is not competent to decide on infringement.

By the way, I mentioned in my amicus curiae for G 1/24, not only the “pemetrexed decision”, but also another famous decision of the UKSC, the “Improver/Epilady” decision, which went in the opposite direction, in order to illustrate exactly the point I am making above here. See Points V.2.1 and V.2.2 of my amicus curiae.

Doubting Thomas

Mr Thomas, I am not sure that it advances the discussion here to debate who got it right on added matter in the pemetrexed case (ie whether the UK Supreme Court or instead the EPO examiner).

For the record, I am inclined to side with the EPO examiner, as the key disclosure seemed to be limited to the disodium salt. However, that is not the end of the matter, as it is important to consider not only the perspective of the skilled person but also any implicit disclosures of the application as filed (which could conceivably include an implicit generalisation to all forms of pemetrexed).

However, the reason that this is irrelevant is that, in the end, the UK Supreme Court determined that the “normal” claim scope WAS limited to the disodium salt. The finding of infringement was therefore based SOLELY on the court’s view that the allegedly infringing forms were “immaterial variants” of the disodium salt.

As I have explained in a previous comment, considering equivalents for the purposes of assessing infringement does NOT mean that it becomes necessary – other than as a defence to infringement – to consider equivalents (in the same forum) for the purpose of assessing patentability. It just does not follow.

Has now the penny dropped?

Daniel X. Thomas

You, and other people, seem to fully misunderstand what I am trying to say: As far as equivalents are concerned, I have replied to you at another place.

The pemetrexed and the Improver case were cited as examples of how the interpretation of claims might vary. There is no doubt that Actavis did not infringed directly Eli Lilly’s patent.

However, if you want the same interpretation of the claims in infringement and validity, then, as an example, equivalents should in all logic be accepted when it comes to drafting the description and the claims. The penny still does not seem to have dropped on your side.

I remember a say from a late French litigation lawyer: the patentee discovers its patent on the day of infringement. What you wish is that the EPO determines for you what you have not said, but wish to have said. That is not the job of the EPO.

Anonymous

It’s really very simple and it is alarming that you feel the need to ask if the penny has dropped as if you have somehow proven a point. The approach in the UK distinguishes between (i) what the claims mean and (ii) what infringes those claims. You claim that “the same interpretation criteria applies to validity and infringement” but your crucial misunderstanding is that the doctrine of equivalents has nothing to do with interpretation or the gold standard.

As stated in the decision you so frequently criticize: “a problem of infringement is best approached by addressing two issues, each of which is to be considered through the eyes of the notional addressee of the patent in suit, ie the person skilled in the relevant art. Those issues are: (i) does the variant infringe any of the claims as a matter of normal interpretation; and, if not, (ii) does the variant nonetheless infringe because it varies from the invention in a way or ways which is or are immaterial?”

Normal interpretation under question (i) is how the UK patent office deals with added matter and prior art and how infringement under step (i) is assessed. You cannot add any subject matter which was not present under the normal interpretation of the application as filed and this is a basic facet of UK prosecution. You certainly cannot add subject matter which is equivalent to what was originally disclosed and you would be laughed at for suggesting this approach.

The entire point of question (ii) is that patents ought to cover immaterial variants that the drafter could not have foreseen at the priority date. Again, referring to the decision that you so strongly dislike: “This reformulated second question should also apply to variants which rely on, or are based on, developments which have occurred since the priority date, even though the notional addressee is treated as considering the second question as at the priority date. Such an approach is supported by the desirability of both consistency of approach and pragmatic justice. It seems right in principle to have the same question, including the same assumption (ie that the variant works) for all cases. As to pragmatism, the point is touched on by Judge Kalden in the passage quoted at the end of para 51 above: while the notional addressee may answer the reformulated second question affirmatively even where the variant was unforeseeable at the priority date, he is less likely to do so than in relation to a variant which was unforeseeable as at that date.”

You seem to get caught up on the fact that the UKSC criticized the examiner. They were incorrect to do so in my view but you must remember that the UKSC had seen huge amounts of evidence on what common general knowledge was, which inevitably factors into what they consider to be derivable from the application as originally filed. it is understandable that what they felt was unambiguously derivable using common general knowledge differed from what the examiner (who let us remember was under the EPO management’s production targets and had no evidence of common general knowledge) felt was unambiguously derivable. I feel that the UKSC should not have said “at least as at present advised, I am inclined to think that the examiner was wrong in taking that view”, and should instead have said “if this amendment were presented before this court, with the benefit of the evidence which we have seen, we would have allowed the amendment that the examiner refused”. However, this is not relevant to the present discussion, because added matter has exactly nothing to do with the doctrine of equivalents.

Daniel X. Thomas

@ Anon 4,

Please do not feel alarmed, it would only bring sadness to me.

I want to reassure you. I do not dislike any decision. It happens that I criticise some of them, even of the boards of appeal of the EPO. This is different and is relates to freedom of opinion.

As far as UK case law is concerned, it is not applicable at the EPO and any further discussion on this point is useless.

What the UKIPO does or not, what the UKSC decides or not, is a piece of information, amongst many other pieces of information, but there is no obligation to follow it. This is the more so since the common law system is quite different from what is happening on the continent.

For the surplus, I refer to my comments to Doubting Thomas and the numerous very courageous preceding anonymous writers. For information, Doubting Thomas is not anonymous to me, but I will not say more.

Doubting Thomas

Mr Thomas, I do not misunderstand you. Far from it. Indeed, there are some points upon which we agree.

For example, I agree with you that importing equivalents into the determination of claim scope for the assessment of validity would be incompatible with the EPO’s “gold standard” uniform concept of disclosure. I also agree that the “gold standard” should prevail.

Where our views diverge is on the question of whether it is possible to interpret the claims in the light of the description without creating incompatibilities with the EPO’s “gold standard”. My understanding is that a negative answer to that question is the argument that underpins what you clearly believe are the conclusive arguments in your amicus brief. I also understand that this makes you predisposed to reject out of hand any arguments that lead to a positive answer to the above question.

It is therefore unsurprising to me that you seem to have no intention of even trying to understand the arguments advanced by Anon and myself, which point to two distinct reasons why it IS in fact possible to interpret the claims in the light of the description without creating incompatibilities with the EPO’s “gold standard”. Indeed, alleging that I have confused extent of protection with validity of the claims demonstrates to me that either you do not understand the relevant concepts (the principle of the primacy of the claims and the uniform concept of disclosure) or that you are instead looking for any way – no matter how implausible – to dismiss or minimise my arguments.

It is certainly admirable to stand up for what you truly believe. But essentially closing your eyes and ears to all contrary arguments does not make you a principled person. Instead, it makes you closed-minded and dogmatic.

Now, I am not saying that it is impossible that my own arguments are flawed in some way or other. But if you are going to find any such flaws, it really will be necessary for you to first digest and understand the basis of my arguments. I don’t think that you are quite there yet.

Daniel X. Thomas

@Doubting Thomas,

Be reassured I am not looking for any way – no matter how implausible – to dismiss or minimise your arguments and I am not closing my eyes and ears to all contrary arguments.

We simply have diverging views on the present topic. We are presently in the same situation as we were when it came the discussion about support of the claims by the description and the necessary amendment of the description when the claims are amended.

Leaving aside the discussion on added-matter and equivalents, I am of the opinion that you cannot use the description to give to a feature in a claim a different interpretation of that the skilled person would give to it when reading the claim. If you want a different interpretation of the claim on the basis of the description, you will have to align what is said in the description to what you put in the claim. I do not see why this is so difficult to understand.

I will come back to an old example of mine: the claim mentions a ventilator, but in the description the ventilator is defined by blowing hot hair. Reading the description we are thus in presence of something different from what is said in the claim. If the applicant defines in the description the ventilator as blowing hot air, then this same definition should be found in the claim. The applicant cannot say that the claim is not novelty stricken when a ventilator is cited in the prior art since he has chosen a different definition of ventilator in the description.

The same goes in the other direction, a feature in a claim cannot be broadened in the description so as to avoid prior art. If a claim has to have a broad interpretation, this should be reflected in the wording of the claim.

Before carrying out the search for prior art and prior to examination it needs to carefully read the description so as to have an idea of what the claims entail. But the search and the examination are primarily based on the wording of the claims. Call it primacy of the claims or not, but at the end of the day, what is compared with the prior art is the subject-matter of the claims and not the content of the description.

In both the above examples, we are not really far from the discussion of support of the claim under Art 84. I have never been in a favour of the theory that a description should be used as a dictionary for the claims. Then why are claims needed, if the skilled person is obliged to refer to the description to understand exactly what is meant in the claim?

I allow myself to note that you have never replied to my view that historical reasons have brought the EPC to stop at grant and to leave infringement to national courts and presently the UPC. As the EPO has no competence whatsoever in infringement, why should the EPO attempt to interpret the claim as if it was in presence of an infringement? By saying that the same interpretation should be given to the claims in infringement and validity, this I what you request from the EPO.

In the light of Art 69 and of the protocol, the interpretation of claim in case of infringement is necessarily different from determining the validity of a claim.

Primacy of the claims is neither an invention of myself, the president of the EPO, or from some boards of appeal, but is a necessity in order to give the proper focus to the search for prior art and to the examination. It also results from the necessity to only file translations of the claims in the two other official languages in order to obtain a grant.

Doubting Thomas

OK, I will answer the points that you raise.

In my view, the EPO should NOT attempt to interpret the claim as if it was in presence of an infringement.

However, contrary to what you appear to believe, it is still possible for the EPO to interpret the claims in a manner that is consistent with the “normal” claim scope afforded by the courts (for BOTH infringement AND validity).

In essence, “normal” claim scope is the subject matter defined by the claims, as determined by the person of ordinary skill in the art in the light of their common general knowledge and the disclosures of the description and drawings. In my view, the “normal” claim scope should be used for assessing both validity and infringement (other than by equivalence).

Equivalents represent “immaterial variants” of the subject matter defined by the claims. They fall OUTSIDE of the “normal” claim scope. They are therefore of no relevance to the assessment of validity. Thus, saying that the same interpretation should be given to the claims in infringement and validity does NOT mean that equivalents need to be considered by the EPO.

To an extent, I can agree with you that interpreting the claims in the light of one or more “unusual” definitions in the description means that those “unusual” definitions should be inserted into the claims. However, it is not always possible to import into the claims the full context provided by the description of the application as filed. For example, the description might INDIRECTLY define a term used in the claim, by reference to a mutually exclusive ALTERNATIVE definition that is not listed in the claims.

Regarding your old example, the claim to the ventilator would, during examination, be objectionable under Article 84 EPC (whether for lack of support or missing essential features). If the claims are granted and the description is not amended, then the claims should be interpreted in accordance with the description. Indeed, it would be absurd if it were not thus. If the invention disclosed in the application as originally filed is a “ventilator” that blows hot hair, then that invention does NOT relate to any other type of “ventilator”. Consider what the situation would be if the application as originally filed did not contain any claims: how could it then be concluded that a “ventilator” other than that described in the description is disclosed in accordance with the EPO’s “gold standard”?

Regarding the primacy of the claims, it seems to me that you have not spotted the irony of:
– asserting the Article 69(1) EPC is NOT applicable to the assessment of patentability in proceedings before the EPO; but
– relying upon Article 69(1) EPC as alleged basis for the “primacy of the claims” principle that is used by the EPO to interpret claims for the purpose of assessing patentability.

Either Article 69(1) EPC is relevant to assessments of patentability or it is not. You cannot have it both ways.

Search and examination at the EPO may well be primarily based on the wording of the claims. But that does not mean that this is the correct way of going about things. Absurd results arise when the “principle of the primacy of the claims” is applied. This suggests to me that there needs to be a rethink of EPO practice on claim interpretation.

Claims are needed because they define both the starting point and the boundaries of the invention, which equates to the “normal” claim scope. The skilled person is obliged to refer BOTH to the description AND to their common general knowledge in order to understand exactly what is meant by the wording of the claims. One cannot consider cgk alone, as that would ignore potentially crucial context provided by the rest of the patent document.

The EPO indeed has no competence whatsoever in infringement. So why should the EPO:
– interpret claims entirely out of context (ie ignoring the disclosures of the description and drawings of the application as originally filed); and
– attempt to “imprint” that acontextual interpretation onto the description, thereby changing or eliminating the context in which the invention was originally disclosed?

By pursuing such an approach, the EPO is attempting to limit the ability of the national courts to reach their own conclusions regarding the meaning of the wording of the claims. Does that not look a lot like the EPO straying beyond its remit, ie into issues of “normal” claim scope for the purposes of assessing infringement?

Daniel X. Thomas

@ Doubting Thomas,

I hope this will be the last reply of mine, as by now the topic is getting exhausted.

If it is necessary to resort to the description which might INDIRECTLY define a term used in the claim, by reference to a mutually exclusive ALTERNATIVE definition that is not listed in the claims, an immediate conclusion is that this claim most probably lacks clarity. It could also be one particular situation which could be accepted as an exception confirming the rule. Could you please give an example of such a situation?.

Since the EPC 2000, claims are not necessary to obtain a filing date, cf. R 40. Claims are however necessary in order to satisfy the requirements of Art 78. The scenario you envisage with a description without claims does not exist in European practice.

Your comment about the ventilator for blowing hot air in the description is thus without merit. If the filed claim merely refers to a ventilator, EPO’s “gold standard” would allow to claim the ventilator blowing hot air.

In the example of the ventilator, which is a real example I was confronted with, discussing clarity with the applicant was to no avail. The only way to make the applicant move was to raise an objection of lack of novelty. An objection of lack of inventive step can also be considered. As it stood, the subject-matter of the claim was not patentable. My experience shows that an objection of lack of novelty or inventive step is always more persuasive than an objection of lack of clarity which can lead to endless discussions.

This point of view is supported by the line of case law stating that it not possible to give in the description a meaning to a claimed feature which is different from that a skilled person would derive from its ordinary meaning when reading the claim.

Article 69(1) EPC is NOT relevant to the assessment of patentability. It is relevant to assessing the scope of protection and it is further explained in the protocol how this notion has to be applied.

Art 69(1) does not speak about the description as being the starting point for determining the scope of protection, but clearly gives this duty to the claims. The claims are the starting point of the assessment of the scope of protection. The description might allow to give a broader scope, but it s not the duty of the EPO to examine how far this scope of protection might go.

Contrary to what you claim, the EPO does not interpret claims entirely out of context (i.e. ignoring the disclosures of the description and drawings of the application as originally filed).

Be it only for determining if there is added matter, the original description and drawings are the benchmark to decide whether a claimed feature is directly and unambiguously derivable from the original filing.

When searching and examining, the claims are the starting point, but the description and the context of the invention is duly taken into account. The description cannot be ignored and has to be taken into account, but not to the extent you wish it.

It is thus plainly incorrect to state that the EPO attempts to “imprint” an allegedly acontextual interpretation onto the description, thereby changing or eliminating the context in which the invention was originally disclosed.

To my knowledge a national court has never been hindered in interpreting the claims as it thinks fit when deciding upon infringement.

I cannot but agree that the skilled person is obliged to refer BOTH to the description AND to their common general knowledge in order to understand exactly what is meant by the wording of the claims. But the wording of the claim is what primes.

However, the description cannot be used to conceal what the claim is actually about or to give a different meaning to a claimed feature by stating something in the description which does not correspond to the ordinary meaning of a claimed feature for the skilled person.

The notion of support of the claims does not resume itself in a vague relation between claims and description. The notion of support by the description is to bring a direct relation between the claim, and the degree of generalisation it always implies, and what is described/disclosed, and not something which can be interpreted at will in post-grant procedures.

Your statement “Absurd results arise when the “principle of the primacy of the claims” is applied” needs some concrete examples. For the time being, it boils down to a mere allegation. It is too easy to come with such a sweeping statement without explaining what you understand under this rather provocative comment.

The EPO has the duty to grant patents the claims of which are clear by themselves, their subject-matter being novel and inventive, even if the description may allow a broader scope of protection in case of infringement.

Doubting Thomas

Mr Thomas, I do not have the time to address all of your comments. However, I will address your assertion that “The scenario you envisage with a description without claims does not exist in European practice”. This is because it makes it clear to me that you have not at all understood the point that I am trying to make.

In essence, as confirmed by R.40 EPC, it IS possible to file a patent application WITHOUT claims. The SUBSEQUENTLY FILED claims then DO NOT FORM PART OF THE APPLICATION AS ORIGINALLY FILED. This means that those claims need to be assessed for compliance with Article 123(2) EPC (as well as Article 76(1) EPC, if the application is a divisional).

For such an application, affording the term “ventilator” its “standard” definition in the SUBSEQUENTLY FILED claims will add subject matter if the APPLICATION AS ORIGINALLY FILED makes it clear that an “unusual” definition of that term applies to ALL embodiments of the disclosed invention.

Surely you will now concede this point. It is clear-cut, is it not?

Daniel X. Thomas

@ Doubting Thomas, last entry,

I have very well understood the point you are trying to make. Please avoid considering me as being as thick as two planks. I require a minimum of respect, which is presently lacking.

You do not have to tell me that claims which are not filed at the same time as the description and the drawings are not part of the originally filed documents and have first to be checked for conformity with Art 123(2). I have enough experience and knowledge to know this.

If the applicant merely claims a ventilator in the later filed claims, there is no doubt that an objection under Art 123(2) will have to be raised as in the description the ventilator will have been defined as blowing hot air. What is there anything peculiar to concede? This is exactly what I have said in my preceding comment. The benchmark for assessing added matter are the originally filed documents.

This does not change the fact that in case the claims were originally filed, and merely state a ventilator, there is no objection of added-matter to be raised. When searching for the claim, a mere ventilator found in the prior art will be novelty destroying for the subject-matter of the claim. But the examiner will not search primarily for a ventilator blowing hot air as explained in the description. Why on earth should he?.

If the applicant has decided on its own volition to claim a mere ventilator, he has to face the consequences of his choice. If the search examiner finds in the prior art a ventilator blowing hot air, he might add it on the search report. It might thus happen that, should the claim be later limited to a ventilator blowing hot air a complementary search might be necessary.

This should always be the case if features from the description, not yet subject-matter of a (dependent) claim are later introduced as limitation into an independent claim. Whether this is actually done or not is a different matter.

You cannot therefore not claim that the EPO ignores the context of the invention. The contrary is true.

The EPO is however not obliged to give a different interpretation to the claim based on what is said in the description, if the applicant/proprietor willingly (party disposition) drafts a claim which is not in accordance with what is originally disclosed. Such a claim might lack support without necessarily leading to an objection of added matter. Here again, the context is not ignored, but in view of the primacy of the claims, it is simply not taken into account.

What you want is to draft a claim near enough to what has been disclosed, but which gives room to interpretation as a different context appears in the description. This might be useful in infringement, but cannot be accepted before grant or in opposition.

I

Doubting Thomas

28 Nov. 2024

Mr Thomas, if you understood my original point very well, then why did you (incorrectly) claim that “The scenario you envisage with a description without claims does not exist in European practice”? You can understand why misspeaking in such a way might prompt a response which includes more detailed explanations.

In any event, it seems that we now agree what the assessment under current EPO practice would be for the “ventilator” application filed without claims.

In connection with that scenario, you seem to be perfectly relaxed with the conclusion that matter would be added by the subsequent filing of claims which:
– verbatim repeat the technical features of the invention as disclosed in the application as filed; but
– omit the “unusual” definition of “ventilator” provided in the description.

However, it is not clear to me whether you have paused to consider some of the disturbing implications that flow from this conclusion. I will illustrate a few of these.

Q1: Why is it that matter is added by the subsequently filed claims in the scenario described above?
A1: Because (and only because) the EPO choses to apply different interpretation approaches to the SAME term, depending upon whether that term appears in either the description or the claims of the patent or application that is the subject of proceedings before the EPO. That is, for the claims (and only for the claims) in such cases, the EPO interprets terms by using an approach that prioritises EXTERNAL context, as provided by common general knowledge, over INTERNAL context provided by the description and drawings.

Q2: What happens if, a day after filing the (first) application without claims, I file a second application that is IDENTICAL to the first except that it INCLUDES claims, which claims are identical to those that I subsequently file in the first application?
A2: Well, for your second application, the first application will be prior art under Article 54(3) EPC. However, the EPO will interpret the disclosures of that document (INCLUDING the subsequently filed claims) in accordance with the “uniform concept of disclosure”. This means that ONLY the “unusual” definition of “ventilator” will apply to ALL disclosures of that first application. The consequence of this is that the claims of the second application will be deemed NOVEL over the IDENTICAL claims of the first application.

Q3: What happens if my first application claims priority from an earlier (but IDENTICAL) application filed with the SAME claims?
A3: I am sorry to say that, even though the claims of your first application are IDENTICAL to those of your priority application, you will NOT BE ENTITLED TO PRIORITY unless you amend the claims of your first application to include the “unusual” definition of “ventilator”. This is because the disclosures of your priority application will again be assessed in accordance with the “uniform concept of disclosure”.

I could continue, but I hope that you will get the gist by now. As you will see, the consequences of applying “the principle of the primacy of the claims” can be absurd. This is because it means that the EPO will interpret IDENTICAL disclosures differently, depending upon whether the disclosure is:
– on the one hand, in the claims of the application or patent that is the subject of proceedings before the EPO; or
– on the other hand, in any other part of that document OR in literally any other document in the proceedings.

Oh, and one more thing. Please stop casting aspersions on my motivations for arguing in favour of claims being interpreted in the light of the description. I have no wish either to pull the wool over anyone’s eyes or to create Angora cats. I just want the EPO to adopt a CONSISTENT (and legally sound) approach to the interpretation of documents in proceedings. Remember, if the same approach is used both before and after grant then Angora cats will go extinct. The only thing left will be differences of opinion between different judicial instances. Which is as it should be.

Daniel X. Thomas

@ Doubting Thomas

Should you have read attentively my previous reply, you would have surely noticed that in order to start the grant procedure before the EPO and to carry out a search you need claims. Without claims your request for grant will not be complete. This is also the case when filing a PCT application, you need claims. All your corresponding divagations about applications with or without claims are thus without any merit. This is the more so since only in a very few cases the claims are not originally filed.

Should the claims not having been filed at the same time as the description, then they are checked with respect to added-matter in comparison with the description. If you claim a ventilator, but the ventilator is defined in the description as blowing hot air, you claim more than what you have disclosed, hence you end up with added matter. If what has been directly and unambiguously disclosed, is a ventilator blowing hot air, then you cannot simply claim a ventilator. Any amendment of the claims during prosecution, be it in examination or in opposition, will always compared to the originally filed disclosure.

That is exactly what the examiner did in the pemetrexed case. Only pemetrexed disodium was disclosed and not merely pemetrexed. A claim to pemetrexed in general infringed Art 123(2).

Another example: the claim defines a “perforated layer”. The description states that in the perforated layer, the holes are small enough to prevent passage of liquid, but large enough to allow air to pass through. Claiming a mere perforated layer manifestly infringes Art 123(2). What has been directly and unambiguously disclosed is a perforated layer in which the holes are small enough to prevent passage of liquid, but large enough to allow air to pass through. A perforated layer with a single whole would fall under the claim.

It seems thus to me that, when you consider that a later filed claim to a ventilator encompasses a ventilator blowing hot air, you have never grasped the meaning of “directly and unambiguously derived”.

The search will be carried out based on the claims merely mentioning a ventilator and not a ventilator blowing hot air. I already explained that if the search examiner finds a ventilator blowing hot air, it will be mentioned on the SR, but the search is based on the claims as filed.

If the claims are amended to overcome the objection, i.e. by adding that the ventilator blows hot air, then a complementary search has to be carried out. A complementary search is also needed any time an independent claim is limited by features from the description, which were not yet subject of dependent claims.

If, a day after filing the (first) application without claims, you file a second application that is IDENTICAL to the first except that it INCLUDES claims, the first application will not be searched and examined without having any claims.

A decision to grant the second application with claims will have to wait until the first application is published, whereby the published first application will not be published without claims. As far as Art 54(3) is concerned, you should know that it is the whole content approach which has been adopted by the EPC and not the whole claim approach. All your oddly constructed case is thus again without merit.

In order for a priority to be validly claimed in substance, it is the identity of invention, G 2/98, which matters. If in the first application you only claim a ventilator and in the second you claim a ventilator blowing hot hair, your priority will be valid, provided the ventilator blowing hot air will have been disclosed in the earlier application. The claims are never compared.

As for Art 54(3), what matters also is the whole content approach and not the comparison of the claims. You should also know that the right to priority is independent from the fate of the earlier application. The first application might be refused under Art 123(2) if the applicant persists with a claim for a ventilator, not specifying that the ventilator blows hot air. But the second application claiming a ventilator will continue irrespective of what happened to the earlier application.

The primacy of the claim does not lead to absurd results, but it does when you construct situations which do not correspond to the way the EPC has been interpreted by the boards of appeal and the EBA, and which are clearly at odds with the notion of whole content approach.

You seem to have stopped at the old “omnibus claims” as they were usual in the UK practice. With omnibus claims you indeed have to look at the description. Have you ever read R 43(6)? Why do you think it has been drafted?

It is abundantly clear to me what you want. When you write ventilator in your claim, but you define ventilator in the description as blowing hot air, you want the EPO to look at the description and to realise that your ventilator is actually a special ventilator. If you want protection for a special ventilator you have to define your ventilator as blowing hot air in the claim. It is as simple as that.

By claiming a ventilator when you think of a ventilator blowing hot air it is you who is pulling wool over the eyes, by concealing in the description something different than what the skilled person would consider when reading the claim.

In plain English, I call this a deliberate attempt of cheating. If one would follow your reasoning, claims would be mere accessory as it would constantly need to refer to the description about the meaning of a feature of the claim. This is not what the fathers of the EPO had in mind when they drafted Art 69 and the Protocol.

When you do not want to adapt the description to the claims you are as well trying to pull wool over the eyes. You wish to leave some uncertainty, which later would allow you to get more out than what you have properly claimed.

What is described above here has been the practice at the EPO since its opening. That you do not like it, is your good right, but this is a fact, and I doubt that the EPO will change its practice because you do not like it. I would also invite to go back to basics. It could help your understanding of EPO’s practice.

In view of our fundamental divergences, and your deep misunderstanding of the EPC and the case law of the boards, I consider the discussion closed. It is pointless to continue it. I leave you with your beliefs, but please respect my position.

Doubting Thomas

Mr Thomas, I can see that this exchange is not really leading to the end point that I was seeking, namely identifying the points upon which we can agree. I have already pointed out a few issues where I can identify common ground between us. It just feels like to me as if you are far too keen on (trying to) discredit every point that I make to realise that there might be a few further points on which our views align.

Let me illustrate by reference to your most recent comments.

DXT: Without claims your request for grant will not be complete. This is also the case when filing a PCT application, you need claims.
DT: I agree. On both points.

DXT: All your corresponding divagations about applications with or without claims are thus without any merit. This is the more so since only in a very few cases the claims are not originally filed.
DT: I disagree that my examples relating to applications without claims are “without merit”. By your own admission, SOME applications are filed without claims. Whilst they may be few they help to illustrate a point of principle.

DXT: If you claim a ventilator, but the ventilator is defined in the description as blowing hot air, you claim more than what you have disclosed, hence you end up with added matter.
DT: Well, you only end up with added matter if you interpret “ventilator” as taking its “normal” meaning, as opposed to the definition provided in the description. This is a point upon which our views diverge. From my perspective, it is a bit odd to afford to the description the purpose of disclosing the invention only to then ignore key aspects of HOW the invention is disclosed when reading the claims. It is also VERY odd, in my view, for a word which has one meaning in the description to suddenly assume a different meaning when it is repeated in the claims (ie a different part of the same document).

DXT: If what has been directly and unambiguously disclosed, is a ventilator blowing hot air, then you cannot simply claim a ventilator.
DT: Again, this all depends upon how you interpret the word “ventilator”.

DXT: Any amendment of the claims during prosecution, be it in examination or in opposition, will always compared to the originally filed disclosure.
DT: I agree.

DXT: Only pemetrexed disodium was disclosed and not merely pemetrexed. A claim to pemetrexed in general infringed Art 123(2).
DT: I am inclined to agree with your conclusion.

DXT: Another example: the claim defines a “perforated layer”. The description states that in the perforated layer, the holes are small enough to prevent passage of liquid, but large enough to allow air to pass through. Claiming a mere perforated layer manifestly infringes Art 123(2).
DT: It depends. If the description serves as its own dictionary (e.g. by including a statement along the lines of “As used herein the term “perforated layer” means …”), then I would say that no matter is added. However, in that case the claim may well be objectionable under Article 84 EPC (as, for the sake of clarity, the custom definition of “perforated layer” should be included in the claims).

DXT: It seems thus to me that, when you consider that a later filed claim to a ventilator encompasses a ventilator blowing hot air, you have never grasped the meaning of “directly and unambiguously derived”.
DT: Again, this all depends upon how you interpret the word “ventilator” (ie whether you take account of a custom definition in the description).

DXT: The search will be carried out based on the claims merely mentioning a ventilator and not a ventilator blowing hot air. I already explained that if the search examiner finds a ventilator blowing hot air, it will be mentioned on the SR, but the search is based on the claims as filed.
DT: That is current EPO practice. That should not be conflated with the correct approach to interpretation of the claims.

DXT: If, a day after filing the (first) application without claims, you file a second application that is IDENTICAL to the first except that it INCLUDES claims, the first application will not be searched and examined without having any claims.
DT: Agreed.

DXT: A decision to grant the second application with claims will have to wait until the first application is published, whereby the published first application will not be published without claims.
DT: Also agreed.

DXT: As far as Art 54(3) is concerned, you should know that it is the whole content approach which has been adopted by the EPC and not the whole claim approach. All your oddly constructed case is thus again without merit.
DT: If, by “whole contents approach” you mean in accordance with the uniform concept of disclosure, then I agree that this is how the EPO interprets disclosures in prior art (patent) documents. However, I profoundly disagree with the allegation that my case is “without merit”. The point I was making is that even after the claims are filed in the first application, the EPO will, in accordance with the uniform concept of disclosure, interpret the term “ventilator” in that application SOLELY in accordance with the custom definition provided in the description. On the other hand, applying the principle of primacy of the claims to the second application will lead the EPO to arrive at a DIFFERENT (ie “normal”) interpretation of “ventilator” in the ORIGINAL claims of that second application. Hence the claims of the second application will be deemed novel over the whole contents of the first application.

DXT: In order for a priority to be validly claimed in substance, it is the identity of invention, G 2/98, which matters. If in the first application you only claim a ventilator and in the second you claim a ventilator blowing hot hair, your priority will be valid, provided the ventilator blowing hot air will have been disclosed in the earlier application. The claims are never compared.
DT: I never implied that there should be any comparison of claims. The point here (again) is that the disclosures of the priority document will be interpreted in accordance with the uniform concept of disclosure, with the result that the term “ventilator” will be understood as ONLY taking the custom definition provided in the description of the priority application. Due to the principle of primacy of the claims, the term “ventilator” in the claims of the first application will not be afforded the same interpretation unless the custom definition is inserted into the claims.

DXT: The primacy of the claim does not lead to absurd results, but it does when you construct situations which do not correspond to the way the EPC has been interpreted by the boards of appeal and the EBA, and which are clearly at odds with the notion of whole content approach.
DT: I can agree that my examples illustrate situations where application of the principle of primacy of the claims leads to results that are at odds with the uniform concept of disclosure. It therefore seems that the only point of disagreement here is whether my examples are valid. I will leave that to the readers of this blog (and to the EBA) to decide.

DXT: You seem to have stopped at the old “omnibus claims” as they were usual in the UK practice. With omnibus claims you indeed have to look at the description. Have you ever read R 43(6)? Why do you think it has been drafted?
DT: Omnibus claims are a little before my time, old chap. I have never had to consider those in practice.

DXT: It is abundantly clear to me what you want. When you write ventilator in your claim, but you define ventilator in the description as blowing hot air, you want the EPO to look at the description and to realise that your ventilator is actually a special ventilator. If you want protection for a special ventilator you have to define your ventilator as blowing hot air in the claim. It is as simple as that.
DT: Well, I certainly have sympathy with your point of view here. The reason that I do not fully agree with you is that I think that it is not always possible to import into the claims wording that precisely reflects how those skilled in the art will interpret the terms of the claims in the light of the description and drawings (and their common general knowledge). I also believe that it is dangerous to rely upon allegedly “normal” definitions of terms used in the claims. There are various reasons for this but one of the most important is that “normal” meanings of terms are not fixed and can change over time. This applies particularly to technical fields, where new discoveries (and even new fields of science) are constantly changing things.

DXT: By claiming a ventilator when you think of a ventilator blowing hot air it is you who is pulling wool over the eyes, by concealing in the description something different than what the skilled person would consider when reading the claim.
DT: At this point, I will point out (again!) that what I am aiming for is a consistency of approach. I believe that the claims should be interpreted in the light of the description both before AND after grant. For the “ventilator” example, this would lead to the grant of a patent only if a ventilator blowing hot air meets the requirements of the EPC. Even if the custom definition of “ventilator” is not included in the claims (though I believe it should, where possible) the courts of the EPC member states will still interpret the claims in accordance with Article 69 EPC … and hence also apply the same custom definition for the purposes of determining infringement. So no wool being pulled over anyone’s eyes.

DXT: In plain English, I call this a deliberate attempt of cheating.
DT: You seem to have a very dim view of EP representatives. And a conspiratorial mind set.

DXT: If one would follow your reasoning, claims would be mere accessory as it would constantly need to refer to the description about the meaning of a feature of the claim. This is not what the fathers of the EPO had in mind when they drafted Art 69 and the Protocol.
DT: Well, what about the uniform concept of disclosure? Where does that come from? What would be the problem with applying that concept also to the claims of patents or applications that are the subject of proceedings before the EPO?

DXT: When you do not want to adapt the description to the claims you are as well trying to pull wool over the eyes. You wish to leave some uncertainty, which later would allow you to get more out than what you have properly claimed.
DT: I refer you to my earlier remarks about wool over eyes.

DXT: What is described above here has been the practice at the EPO since its opening. That you do not like it, is your good right, but this is a fact, and I doubt that the EPO will change its practice because you do not like it. I would also invite to go back to basics. It could help your understanding of EPO’s practice.
DT: Er, back to basics is EXACTLY where I have gone. Which is why I have concluded that the EPO has always got itself into a bit of a muddle when trying to determine the rules for interpreting claims. Indeed, if it had not got itself into a muddle, there would be no need for G 1/24.

DXT: In view of our fundamental divergences, and your deep misunderstanding of the EPC and the case law of the boards, I consider the discussion closed. It is pointless to continue it. I leave you with your beliefs, but please respect my position.
DT: As I said at the outset, my aim is to identify common ground. Explaining my views and pointing out where I disagree (or where I believe that what you have written many not be entirely correct) is all aimed at achieving that objective. NONE of that implies any disrespect. On the other hand, I am not sure that the same could be said about the insults and aspersions that you cast against me – or the repeated (deliberate?) misrepresentations of my views.

francis hagel

@Doubting Thomas

On this topic, I disagree with you and I agree with Mr Thomas.

I see two subjects which need to be distinguished while they are related : first, the applicability of Art 69 to the examination of applications and the current case law a to claim interpretation, and second, the scope of « claim interpretation » which calls for clarification to avoid confusion.

Looking at Art 69, its applicability to the examination of applications involves a truncated reading of Art 69. Looking at EPC as a whole, Art 69 is part of Chapter III of Part II, entitled « Effects of the European patent and the European patent application ». The assessment of patentability is the subject of Chapter II.

The argument that courts dealing with infringement cases and counter-claims for patent revocation must apply the same interpretation rule, which is a requirement for avoiding the « Angora cat » behaviour of a patent owner, is not convincing to justify the applicability of Art 69 to ex parte examination of applications because the contexts are quite different. A court deals with the interpretation of claims in concreto, with a dispute between the parties over specific terms. During examination, the issue of claim interpretation is to be addressed in abstracto. The objectives are also different. A court must handle a conflict between parties, whereas the EPO during examination must ensure that the claims comply with the EPC conditions for the public interest. Compliance with Art 84 is a significant issue to make sure the terms of claims have a clear meaning. In addition, the resources available are highly different depending on the context. They are strongly constrained during examination and in this context, the rule must be simple.

The rule of claim interpretation during examination has to take into account these objectives and constraints. The settled case law of the BOAs regarding claim interpretation » is stated in CLB I.C.4.1 : « It is a well-established principle laid down by the boards’ case law that a non-specific definition in a claim should be given its broadest technically sensible meaning (see T 79/96, T 596/96) » and the language is the same in CLB II.A.6.1. This principle is asserted in numerous recent decisions (inter alia, T 1705/17, T 1208/21, T 1628/21).

This principle prevents an unclaimed feature disclosed in the description or the drawings from being « read » into the claim as an implied limitation and from being relied upon by the applicant to overcome an objection. If the reliance on an unclaimed feature enables the applicant to convince the ED to allow the case, this feature is « essential » and the applicant must be required by the ED to enter the feature into the claim so as to meet Art 84 and/or Art 52/56. It is surprising in this respect that the settled case law is even not mentioned in the referral decision T 439/22 leading to G 1/24.

This principle must not be viewed though as excluding any use of the description for claim intepretation, since the assessment of what is, or not, « technically sensible », has to rely on the description.

Interestingly enough, the rule of claim interpretation during examination is asserted in strikingly similar terms in the US MPEP 2111.

This leads to the second question which is the meaning of « interpretation ». The dominant meaning under Art 69 relates to terms in a claim supposedly clear in themselves. It is common for terms in a claim to be capable of being given varying scopes, including or not certain exclusions, esp. since practitioners are skilled at using terms as general as possible. For example, the word « engage » is frequently used in mechanical areas. Even a word as simple as the indefinite article « a » may be understood as « one » or « at least one ». On the other hand, in the context of ex parte examination, the meaning of « interpretation » necessarily involves a basic understanding of the terms, and for this purpose, the description and the drawings if any are necessary. Here, the reference in the claims to the numerals of the drawings are more than helpful.

Anonymous

Mr Hagel, thank you for your comments.

You perhaps failed to note that my views do not rely upon Article 69 EPC being used by the EPO for interpreting claims. My views instead rely upon a consistent application of the uniform concept of disclosure (which is, in turn, based upon the general principle of law that a document must be interpreted as a whole). The only topic of debate is therefore whether it is correct (ie legally justifiable) to make the claims of a patent or application that is the subject of proceedings before the EPO the SOLE exception to the EPO’s general approach to interpreting the disclosures of (parts of) documents.

It would be interesting to hear your views on that point, as well as your take on the hypothetical scenarios that I have described (which illustrate why, in my view, application of the principle of primacy of the claims leads to results that are at odds with the uniform concept of disclosure).

francis hagel

@Anonymous

I am not sure I understand the « uniform concept of disclosure » you refer to.

Let us take the example of the term « ventilator « in a claim with the precision in the description that it blows hot air. The principle of the EPO case law for claim interpretation during examination which is to apply the broadest technically sensible interpretation leads to the conclusion that the meaning of « ventilator » for the assessment of patentability does not include the precision that it blows hot air ( except if the claim as a whole makes it clear that it includes this precision).

Accordingly the applicant cannot to rely on the hot air blowing feature to distinguish over the prior art, unless they amend the claim to include this feature.

Daniel X. Thomas

01 Dec. 2024

@ Mr Hagel,

Thanks for your explanations and support. I think your explanations are abundantly clear and show best the way of thinking of the EPO and its BA.

I have doubts that this will ever change. In the case of the ventilator blowing hot air in the description, but only claiming a ventilator, the scope of protection according to Art 69 would most probably be limited to a ventilator blowing hot air.

This would however not withhold a national court to decide that it protects as well a device merely blowing air. In such a situation, there might indeed be a difference in interpretation between grant and infringement. But as far as the EPO a claim to a ventilator is not a claim to a ventilator blowing hot air.

In In T 1127/16 the board reminded that “… the description cannot be used to give a different meaning to a claim feature which in itself imparts a clear, credible technical teaching to the skilled reader. This also applies if the feature has not been initially disclosed in the form appearing in the claim. Otherwise third parties could not rely on what a claim actually states (cf. Article 69(1) EPC: The terms of the claims determine the extent of protection whereas the description is only used to interpret the claims) and Article 123(2) EPC would become meaningless in respect of amendments to the claims”.

There should be no discussion about the consequences of a ventilator defined as blowing hot air in the description and claimed as mere ventilator. Third parties must be able to rely on what the claim actually states. Whether one call it the supremacy of the claims or not is actually irrelevant.

Daniel X. Thomas

I have taken note of your lengthy justification. I will not reply in detail.

It is very simple to find out were our disagreement lies. When you write ventilator or perforated layer in the claim, you wish the EPO to look at the description to see what you could have meant by ventilator or perforated layer. Unless the feature in the claim is, in its eyes, unclear, any deciding body of the EPO has never, and will not, look at the description in order to read into the claim what you might have stated in the description. It will primarily look at the claim.

Your position on the added matter when it comes to the ventilator or the perforated layer is revealing of your mindset. Added matter does come to play when your claim is at odds with what you say in the description. Using a statement of the kind ” As used herein the term “perforated layer” means …”is a best useless and you will be asked to put this definition in the claim if it is important for defining the subject-matter of the claim. An objection under Art 84 is secondary in this case.

Whether you like it or not, what you actually want boils down to conceal the real meaning of a claimed feature by requiring the reader to look at the description. I call this pulling wool over the eyes of the reader. If you claim a spade, you cannot give in the description a fancy definition of a spade. You will have to call a spade a spade.

By the way, I know a lot of representatives, have a great opinion of them, and can even consider a lot of them as being friends..But I doubt we will ever become friends.

Game over!

Doubting Thomas

Mr Thomas, I would encourage you to look back over the to-and-fro between us on this topic.

You have asked for answers to questions that you have posed. I have provided answers. I have also provided detailed reasoning for how and why I have arrived at those answers.

You have demanded respect for your views and I have afforded you such respect (note: simply disagreeing and politely standing up for one’s views is not in any way disrespectful).

If you look back over our messages, can you really say that you have afforded me the same levels of courtesy and respect?

I can see that my persistence on this topic (as on others) has proven to be an irritant for you. That was never my intention, and I am sorry that you have run out of patience. But perhaps it would make things easier in future if you made fewer assumptions about my motivations and instead focused more on understanding the information and concepts that I am trying to convey.

Doubting Thomas

Mr Hagel,

The “uniform concept of disclosure” to which I refer is discussed in CLBA at II.D 3.1.2.
https://www.epo.org/en/legal/case-law/2022/clr_ii_d_3_1_2.html

That concept itself relies upon the general principle of law that a document is interpreted as a whole. This is discussed in CLBA at I.C 4.1.
https://www.epo.org/en/legal/case-law/2022/clr_i_c_4_1.html

The line of EPO case law which relies upon the “broadest technically sensible interpretation” is not at all consistent with either of these concepts of interpretation of the disclosure of a document. My point is that, because of this, absurd results can arise. For example, current EPO practice leads to the meaning of a word changing when it moves from one part of a patent document (the description) to another (the claims). As far as I am concerned, life would be a lot simpler if the EPO decided that the same word in the same document has the same meaning unless it is clear from the context that the author intended a different meaning.

francis hagel

@Doubting Thomas

The broadest technically sensible interpretation is not just “a line” of case law, it is presented as settled in the CBL and it is applied in many recent BOA decisions I have not cited in my comment.

I had the opportunity of exchanges with a senior EPO expert over the last couple of months, he referred to this rule without suggesting any doubt.

Doubting Thomas