EP 3 076 804 B1 relates to a heated aerosol generating article with thermal spreading wrap.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The feature at stake
Claim 1 as granted contains the feature that the material is a “gathered sheet”. All turned about the interpretation given to this feature.
The proprietor argued that if this term is assigned its usual meaning in the art, claim 1 is to be regarded as novel.
The opponent argued that if “gathered sheet” is interpreted in the light of the description, then it would have a broader, although still technically sensible meaning. This interpretation of “gathered sheet” would lead to a lack of novelty.
The need for a referral
In view of the need of interpreting the claim, in T 439/22, the board referred 3 questions to the EBA.
Question 1
Is Article 69 (1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied to the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?
Question 2
May the description and figures be consulted when interpreting the claims to assess patentability and, if so, may this be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation?
Question 3
May a definition or similar information on a term used in the claims which is explicitly given in the description be disregarded when interpreting the claims to assess patentability and, if so, under what conditions?
Diverging case law in respect of Question 1
The referring board identified diverging lines of case law.
One line of case law took Art 69 and Article 1 of the Protocol as the legal basis for interpretation of patent claims when assessing the patentability of an invention under Art 52-57.
Another line of case law took Art 84 as the basis.
A further line of case law which was not explicit as to which article of the EPC was the legal basis for interpretation of patent claims when assessing the patentability of an invention under Art 52 to 57.
Diverging case law in respect of Question 2
One line of case law was that a board only consulted the description and drawings when interpreting the claims to assess patentability if the person skilled in the art found a claim to be unclear or ambiguous when read in isolation.
A further line of case law was that a board always consulted the description and drawings when interpreting the claims to assess patentability.
The EBA’s decision
Admissibility
The EBA considered questions 1 and 2 as being admissible.
For the EBA, question 3 was not admissible. Question 3 is considered by the EBA to be encompassed within Question 2, hence an answer to Question 3 is not necessary for the Referring Board to reach a decision in the case before it.
The reasons for the decision
For the EBA, Question 1 concerns the legal basis in the EPC for carrying out this interpretation. As explained above, either Art 69 and Article 1 of the Protocol or Art 84 have been used as basis.
The EBA reminded that G 2/88, G 6/88 relied on Art 69 and the Protocol, and G 2/12, relied on Art 84 as the respective legal basis.
The EBA considered that neither Art 69 and Article 1 of the Protocol, nor Art 84 are entirely satisfactory as a basis for claim interpretation when assessing patentability.
Art 69 and the Protocol are arguably only concerned with infringement actions before national courts and the UPC. Such a conclusion can be drawn from the wording of Art 69 and the Protocol, the drafting history of these provisions, and from their position in the EPC.
Using Art 84 as an alternative basis for interpretation of the claims can also be criticised. Art 84 addresses the content of the patent application and is formal in nature, does not mention the invention and provides no guidance on how to interpret claims. It only sets out an instruction to the drafter of what needs to be in the claims, and an instruction to the EPO to determine whether the claims meet that purpose, cf. see T 1473/19 Reasons 3.8.
The EBA thus considered that there is no clear legal basis, in terms of an article of the EPC, for claim interpretation when assessing patentability. Given the above, the strictly formal answer to Question 1 would be “No”.
However, in order to give some guidance, the EBA added that whether Art 69 or Art 84 is taken as the basis for claim interpretation does not appear to affect the principles that are applied.
In general terms, what the boards have done is apply the wording of these articles in an analogous way to the examination of patentability under Art 52 to 57. There is thus an existing body of case law from which the applicable principles of claim interpretation can be extracted. The EBA referred to the extensive discussion of how the boards have interpreted patent claims when assessing patentability in the referring decision and quoted T 2684/17 Reasons 2.1.4 and T 1871/09 Reason 3.1), Reason 3.3.3, and in particular T 1473/19 Reasons 3.1 to 3.15 and 3.16 to 3.16.2), and Reason 3.3.4.
From this case law the following principles of claim interpretation can be extracted:
1) The claims are the starting point and the basis for assessing the patentability of an invention under Art 52 to 57.
2) The description and any drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity.
The EBA, in adopting the above position, is thus rejecting the case law of the boards that sees no need to refer to the descriptions and drawings when interpreting a claim, unless the claim is unclear or ambiguous. This is the issue raised in Question 2.
The diverging case law where the description is referred to only in cases of unclarity or ambiguity, is contrary to the wording, and hence the principles, of Art 69. It is also contrary to the practice of the national courts of the EPC states and to the practice of the UPC.
The BA found it a most unattractive proposition that the EPO deliberately adopt a contrary practice to that of the tribunals that are downstream of its patents. On this point, the EBA agreed with the harmonisation philosophy behind the EPC, cf. G 5/83, Reasons 6, and G 3/08, Reasons 7.2.2.
The EBA noted that finding that the language of a claim is clear and unambiguous is an act of interpretation, not a preliminary stage to such an interpretative act.
The EBA thus answers Question 2 as follows: the description and any drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity.
The EBA noted that the current case law of the UPC, as exemplified in Headnote 2 of the order of the CoA UPC UPC_CoA_335/2023-APL_576355/2023 : NanoString Technologies -v- 10x Genomics, of 26.02.2024 as rectified by the order of 11.03.2024, appears to be consistent with the above conclusions.
The above considerations highlight the importance of the ED carrying out a high quality examination of whether a claim fulfils the clarity requirements of Art 84. The correct response to any unclarity in a claim is amendment. This approach was emphasised in the Comments of the President of the EPO.
The order
In the light of the above, the EBA answered the referred Questions 1 and 2 as follows:
The claims are the starting point and the basis for assessing the patentability of an invention under Art 52 to 57.
The description and drawings shall always be consulted to interpret the claims when assessing the patentability of an invention under Art 52 to 57, and not only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation.
Comments
G 1/24 is one of the shortest decisions, if not the shortest, of the EBA.
It is a very summary decision that does nothing to solve the problems. It says nothing much concrete and has not decided wheter Art 69 and Art 1 of the Proptocol have to be taken into account. On the face of it, the EBA considers that Art 69 should in principle apply.
On the other hand, the EBA has not given the faintest guidance what it means under “always taking into account the description and the drawings”. If neither Art 69 and the Protocol nor Art 84 are a proper legal basis, what then is the proper legal basis of the rather apodictic statement of the EBA? In G 1/24, the EBA has not helped to interpret the EPC, as it does not even refer to it.
Art 84 is by no means purely formal, as it appears to be difficult to assess N and IS of an unclear claim. It can be agreed with the EBA, that if a claim is unclear, it ought to be amended.
When we see the divergence in interpretation by the boards of G 2/21, we can expect some difficulties in the future.
It will certainly not prevent divergent decisions between the BAs and the UPC.
As far as I’m concerned, it’s a political decision and the EBA is bowing down to the UPC.
The wording used by the EBA corresponds to that of the CoA UPC.
One day we will have to decide whether the patent is its own dictionary. Angora cats might soon be marching in.
It will also force EDs and ODs to look at the description, even if no relevant prior art will have be found. I pity examiners having to exercise this task. The president might claim that this is the case, but I know for a fact that this is not absolutely correct.
The best example is the Agfa/Gucci case before the LD Hamburg, commented on this blog. We can certainly expect more Art 84 objections from first instance divisions, especially from EDs as G 3/14 has put a limit of the application of Art 84 in opposition.
In this respect, it is interesting to remember that in its submission for G 3/14, the president advocated looking at Art 84 in opposition. One could think that this was to overcome what had been missed during examination.
What about added matter
The referral was limited to the application of Art 52 to 57. As however, the test to determine whether there is added matter, is the N test, G 1/24, might thus also have an influence on the assessment of added-matter.
T 1473/19 has been commented in the present blog. The reference of the EBA to T 1473/19 leads to the conclusion that, although not part of the referral, the claims will have to be interpreted in the light of the description when dealing with Art 123(2) and not only Art 123(3).
As soon as we end up with interpretation, it is clear that the notion of “directly and unambiguously derivable” could be in danger. Let’s hope that this notion will remain.
Comments
10 replies on “G 1/24 has been issued”
Daniel, reading your comment brings to my mind the tart remark of UK politician at the time of COVID 19, that the public have heard more than enough from the experts. Here a Link:
.https://www.spectator.co.uk/article/fact-check-what-did-michael-gove-actually-say-about-experts/
We are living through a period in which a large number of influential people are contending that over the past few decades “we have heard more than enough” on patentability from the experts at the EPO and that the time has come for those higher up, with a more expansive view, to take charge.
A lot of people stand to make a lot more money, the more complicated patent disputes get, in Europe, from now on.
The Decision in G1/24 in my opinion, does little more than kick the can down the road a bit further. Can we expect more from the Referral on whether the description has to be conformed. After all, in the USA it isn’t and yet they argue over there that every claim duly issued by the USPTO has definitely been examined rigorously for its clarity and whether it is “supported” by the decription.
Dear Max Drei,
Further to your comment on the experts, I could ad a French say: in the kingdom of the blind, the one-eyed are king. I leave you to decide who belongs to the blind and who to the one-eyed.
I have my idea: the politicians were lulled into the UPCA, and the one eyed, had sufficient vision towards their purse, so they have established a system with the aim how getting even more money into already very deep pockets. You top this with extremely short procedural delays, and the slot machine is working full pelt.
I hope that the referral on the adaptation of the description will bring more, as it does not appear tolerable that on the one hand, a claim is apparently limited, but the description allows a much broader interpretation, and on the other hand, a claim is rather broad but has to be interpreted narrowly in view of what is written in the description. Some coherence has to be brought in, if we do not want havoc in the patent world. But as you say, havoc can be beneficial for some happy few.
If this I want some want, then let’s go back to the old French system without an claims. At those times, the patentee discovered its patent on the day of infringement….
“As soon as we end up with interpretation, it is clear that the notion of “directly and unambiguously derivable” could be in danger. Let’s hope that this notion will remain.”
This decision does nothing to put “directly and unambiguously derivable” in danger. The equivalent test in the UK is:
(1) to ascertain through the eyes of the skilled addressee what is disclosed, both explicitly and implicitly in the application;
(2) to do the same in respect of the patent as granted;
(3) to compare the two disclosures and decide whether any subject matter relevant to the invention has been added whether by deletion or addition. The comparison is strict in the sense that subject matter will be added unless such matter is clearly and unambiguously disclosed in the application either explicitly or implicitly.
The EPO simply needs to do the same. It merely requires them to consider the document as a whole rather than to ignore all context. This might make it harder for the EPO to revoke patents on minor technicalities, but that can only be a good thing.
@ Intrigued,
I would like to draw your attention to the fact that we are not in the UK. Why should the EPO do the same as the UK or the German Federal Court.
In G 1/24, the EBA has come up with a statement which tries to satisfy the need of harmonisation with the UPC, however without explaining how this ought to be done.
Considering a document as a whole rather than to ignoring all context is meaningless as meaningless can be. It cannot be that a claim says A and the description says the contrary or tries to push the boundaries of A even going as far as B. Whether you like it or not, I call this cheating.
When the boards revoke patents which should never have been granted, it is helping the public, and it is good so.
It is to be hoped that the EPO will give enough time to its examiners to do a proper job as claimed by the president. Otherwise, why bother with examination. Then resort to peer review like for scientific papers, or give up the whole patent system.
I maintain that the notion of “directly and unambiguously derivable” could be in danger.
At least, when looking at the “whole document”, two interpretations are possible and one is manifestly not directly and unambiguously derivable, then we are in presence of added matter.
If two interpretations are possible without adding matter, then there is something wrong with the disclosure. For the sake of legal certainty, the applicant should then be invited to decide which one he wants and may obtain a patent for.
Otherwise you can forget the whole patent system.
I had a sliver of hope, but of course they took the path of least resistance—careful not to “muddy the waters,” as the saying goes. Taking a firmer, more consistent position would’ve required too much effort, especially with their cherished performance KPIs at stake. Once again, the same asymmetry persists: the Opponent is left to fight against the broadest possible interpretation—including equivalents—during infringement, and the narrowest, most literal construction during nullity. If a claim reads onto prior art but the description or drawings suggest something narrower, that shouldn’t be the Opponent’s problem to fix.
@ Bugs
I think you were not the only one having some hopes, and to be honest, G 1/24 is a big deception. I would be more inclined to say that the EBA is actually muddying the waters by coming up with a proposal without giving the faintest idea how this should be done.
If the EPO does not want to create and nurture Angora cats, it better gives its examiners the time necessary to do their job properly.
KPI are one thing, but when do not even know the sample size, how can you ascertain a given result? You could as well put your finger in the wind.
I do agree with you, that it is not for the opponent to do the job the EPO should do. When in less than 10% of the cases patents are revoked or maintained in limited form, then something does not seem to work properly. For instance, why does an opponent have to bring the Art 54(3) prior art, or following a search report with many X or why, it the opponent who brings the really relevant document?
Possible consequences of this decision:
1. Prior to grant, the Art 84 EPC enquiry will increase yet further in intensity, with EPO Examiners taking ever more contrived and formalistic objections and goodwill between Examiners and patent prosecutors ever more strained.
2. After grant, ie in opposition proceedings, the EPO will increasingly feel itself obliged to follow the established case law of the UPC, on how to interpret a duly issued claim.
3. Increases in harmony and legal certainty, all over Europe, with bad patents getting swiftly revoked, and good ones swiftly enforced.
Dear Max Drei,
I think as well that examiners will come up with more unnecessary Art 84 objections, but on the other hand, sooner or later the pendulum will go back in the other direction as the number of patents eventually granted will endanger the cash cow of renewal fees.
That legal certainty should be increased is a valuable aim, but when you see the result after appeal in opposition, with at best 15-20% of patents surviving an opposition without being maimed, the so much touted “early certainty” isdeflating like a balloon full of hot air.
I think the EBA could have added a remark about the abstractness of the given rule this time as well. Though the concisness of the decision (no extensive copy/paste from T decision) is certainly an improvement over G 2/21.
Dear Plu,
When you see how “varied” the boards interpret G 2/21, I fear that G 1/24 will not bring better results. I am rather pessimistic and think that the situation might get worse. If the situation gets worse at the EPO, then proprietors will be happy, but not third parties or the public at large.
May be the conciseness of the decision is simply due to the fact that the EBA itself did not know how the order should be implemented. It was then better to stay at a very general level, not to say a very vague level.
Due to the pre-eminence of technically qualified members at the TBAs, decisions of the EPO have been characterised by avoiding long discussions on the interpretation of the claims and definitions of the skilled person. All these accomplishments risk being lost. Lawyers definitely want their revenge on technicians.
I would have thought that the EBA had another role and duty than merely parroting statements of the CoA UPC.