CASELAW-EPO - reviews of EPO Boards of Appeal decisions

EP3076804 - T 439/22 – Application of Art 69 in procedures before the EPO

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The patent relates to a heated aerosol generating article with thermal spreading wrap (1222-aluminium foil). The heated aerosol-generating article may comprise a plurality of elements, including the aerosol forming substrate (1020-homogenised tobacco), assembled within a wrapper, such as a cigarette paper (1060) to form a rod. The heated aerosol generating article has the form of a classical cigarette. Should the user inadvertently attempt to ignite the tobacco, the aluminium foil prevents the tobacco to burn. Those devices are known under the term “heat not burn”.

Brief outline of the case

The opposition has been rejected and the opponent appealed this decision.

According to claim 1 the aerosol-forming substrate comprises a “gathered sheet” of aerosol-forming material circumscribed by a wrapper, the wrapper being the sheet of thermally-conductive material which acts as a thermally-conducting flame barrier for spreading heat and mitigating against the risk of a user igniting the aerosol-forming substrate by applying a flame to the aerosol-generating article.

The whole discussion turns around the meaning/interpretation to be given to the term “gathered sheet”. In the description some definitions of what can be understood by a “gathered sheet” are given.  

Content of the description – The OD’s point of view

The “gathered sheet” of aerosol-forming material may be a “textured sheet” of material.

The term ’textured sheet’ denotes a sheet that has been crimped, embossed, debossed, perforated or otherwise deformed. Textured sheets of material may comprise a plurality of spaced apart indentations, protrusions, perforations or a combination thereof.

The term ’crimped sheet’ is intended to be synonymous with the term ’creped sheet’ and denotes a sheet having a plurality of substantially parallel ridges or corrugations.

For the OD N was given as for instance D1 does not disclose a gathered sheet but only a rolled sheet.

The OD acknowledged (Decision 9.4 and 10.4) that “gathered sheets” are known as such, as well as their advantages, in the field of aerosol forming devices, but considered that, starting with different pieces of prior art as CPA, the skilled person would not use a gathered sheet in the different CPA, hence IS was given.

Contrary to the OD and to the proprietor, for the opponent, the skilled person has no clear definition of a “gathered sheet” of tobacco material, and hence this term requires interpretation. To interpret the term gathered sheet the OD went by analogy with a similar term in sewing. The opponent disagreed as the two technical areas have nothing in common.

In the course of the appeal procedure, the opponent referred to T 1473/19 commented in this blog.

The board’s position

In a communication pursuant Art 15(1) RPBA (Point 6.), dated 05.12.23, the board suggested, in view of diverging decisions of TBAs on this matter, to refer to the EBA a question about the application of Art 69 in procedures before the EPO. The board set a time limit of 1 month to the parties to take position.

On 18.12.23, the opponent approved the referral and withdrew it request for OP in order for the board to take an interlocutory decision to refer a question to the EBA.

As of today, the proprietor has not replied. Should he not reply, the question of the referral will be the subject-matter of a discussion during the OP originally scheduled for 10.04.2024.


It is an established fact that there is a clear divergence in case lw about the application of Art 69 in procedures before the EPO.

The following lines of case law can be distinguished.

1) No recourse to the description to interpret a claim

T 175/98, T 515/19, T 2370/16, T 1778/17, T 1583/17, T 21/16, T 1853/19, T 19/18 or T 1989/18.

2) Interpretation of the claims in the light of the description under Art 69

T 16/87, T 416/87, T 684/95, T 587/95, T 942/96, T 275/10, T 1473/19, T 450/20.

2a) Recourse to the description only in case of ambiguity

T 481/95, T 169/20.

3) Neither one nor the other – Use of Art 69 in opposition

T 274/94, T 1271/05, T 2309/11, T 42/22

T 42/22 A bit of both

4) Use of Art 69 only in opposition when assessing Art 123(3)

T 1271/05, T 131/15 or T 42/22.

5) Use of Art 69 only when assessing IS

T 274/94.

The present list does not claim to be exhaustive and only serves to give examples of the diverging case law. The list also shows that the problem is not recent. It has simply been amplified by recent decisions.

Some specific decisions

In T 367/20 the board even considered that the description should be taken into account when deciding on the non-infringement of Art 123(2). The same board also issued T 450/20 which was a continuation of T 1473/19, again from the same board. In T 450/20, the proprietor requested that in view of T 1473/19, some questions concerning claim interpretation be referred to the EBA. The board rejected the request for a referral as the questions were too case oriented.

When commenting T 1473/19, I noted that wanting to always interpret the claims in the light of the description is the usual way to deal with claims at the German Federal Court (BGH).

It is therefore debatable whether this approach should be taken over by the EPO, even with the proviso expressed in T 1473/19 that the primacy of the claims limits the extent to which the meaning of a certain claim feature may be affected by the description and the drawings.

I have also always considered that a referral only on the adaptation of the description, would not be as useful as a referral on the application of Art 69. Such a referral has been considered in case EP 3 094 648 – Appeal pending under T 56/21, also commented in this blog.

Risks linked with a referral to the EBA

That a referral to the EBA always entails a certain risk. The risk is to either to get an answer which is not wished by the majority of the users, not really useful, or that the question are reformulated by the EBA in order to get a political wished answer. Dynamic interpretations are always subject to caution as they are too much dependent on the “zeitgeist”.

It will thus depend on the questions brought forward to the EBA if the decision is useful or not.

A referral to the EBA on the adaptation of the description might bring about a steep drop of the number of decisions issued by the EPO or the boards of appeal. In general, procedures touched by a referral are stayed and the risk to create a backlog is rather high as a lot of cases will be impacted. It is thus doubtful whether such a drop in production will be to the liking of the upper management of the EPO or of the boards. 

The preset referral might not be as dramatic in his effects, but the risk of a backlog is nevertheless to be taken into account.

If both questions are referred to the EBA, the latter will have to take a quick decision.

On the form of the OP

As usual for board 3.2.02, this time in a different composition, it superbly ignored G 1/21 and directly summoned to OP by ViCo.

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