The present blog entry does not have the pretence to tell first instance divisions or the boards what should be done in case of a discrepancy between claims and description. It has even less the pretence to tell a post-grant court how it should interpret claims.
It is merely an attempt to come up with a systematic analysis and to deal with cases in which the description contains statements which lead to the conclusion that the claim wording could have a different interpretation in view of the disclosure in the description compared to that of the claim.
This is typically the case when during examination, the description was not consulted as required by G 1/24, and discrepancies or inconsistencies between claims and description do subsist after grant.
The wording “inconsistency”, “discrepancy” or “incongruity” has the same meaning. It describes the situation in which the interpretation found in the description could lead to a different interpretation of claimed features by the skilled person when reading the claim.
It really depends on the situation whether the interpretation in the description is to be taken into account or not. There are two different situations to consider. In the examples to follow, two simple notions will be used: achromatic and chromatic.
1. Broad claim-limiting definition in the description
1.a With respect to prior art
If an applicant/proprietor claims that its patent is valid with respect of the prior art as the interpretation in the description is more limited (F-, e.g. achromatic) than that resulting from the interpretation by a skilled person reading the claim (F, e.g. achromatic+chromatic), we have a problem.
In such a constellation, the interpretation in the description (F-, e.g. achromatic) ought to be ignored, and patentability under Art 52-57 ought to be assessed on the basis of the broader interpretation resulting from the claim wording (F, e.g. achromatic+chromatic). This would not allow the applicant/proprietor to escape a novelty or inventive step objection in view of the broader interpretation (F, e.g. achromatic+chromatic).
1.b When it comes to an alleged infringement
Conversely, should a proprietor claim infringement in view of the broad interpretation of the claim (F, e.g. achromatic+chromatic), then the limited interpretation (F-, e.g. achromatic) given in the description ought be taken into account in order to dismiss the infringement.
1.c How to resolve the inconsistency
If the applicant/proprietor wants the interpretation in the description (F-, e.g. achromatic) to be taken into account he will have to introduce it in the claims. In post-grant situations filing of a limited claim is in principle admissible.
Whatever the situation might be, the applicant/proprietor should not profit from the discrepancy between claim (F) and description (F-).
This would avoid boards of appeal having to make interpretative sommersaults, what they, for good reasons, manifestly dislike.
This is probably also a good way to avoid nurturing Angora cats.
2. Limited definition in the claim-Broader definition in the description
2.a With respect to prior art
If the proprietor claims that its patent is valid with respect to prior art as the interpretation resulting from the claim wording is more limited (F, e.g. achromatic) than the broader interpretation (F+, e.g. achromatic+chromatic) given in the description, then the interpretation in the description (F+, e.g. achromatic+chromatic) ought to be taken into account in order to asses patentability under Art 52-57. It might result in a lack of novelty or inventive step, which would not be the case if the limited interpretation (F, e.g. achromatic) would be taken into account.
2.b When it comes to an alleged infringement
Conversely, should a proprietor claim infringement in view of the broad interpretation given in the description (F+, e.g. achromatic+chromatic) to that compared to the limited one in the claim (F, e.g. achromatic), then the interpretation in the description (F+, e.g. achromatic+chromatic) ought to be ignored and it is the claim wording (F, e.g. achromatic) which is to be taken into account in order to dismiss infringement.
2.c How to resolve the inconsistency
If the applicant/proprietor wants the interpretation in the description (F+, e.g. achromatic+chromatic) to be taken into account, he will have to introduce it in the claims before grant.
After grant, the proprietor will not be allowed to introduce the broader interpretation (F+, e.g. achromatic+chromatic) of the description into the claims in order to replace the originally more limited interpretation in the claim (F, e.g. achromatic), as this would be contrary to Art 123(3).
Whatever the situation might be, the applicant/proprietor should not profit from the discrepancy between the claim (F) and the description(F+).
This would avoid boards of appeal having to make interpretative sommersaults, what they, for good reasons, manifestly dislike.
This is probably also the best way to avoid nurturing Angora cats.
3. Same interpretation of the claims in validity and in infringement
3.1 Minimum requirement
When the interpretation given in the description (F- or F+) has to be taken into account, be it for validity or infringement, and the same interpretation of the claims between patentability and infringement should be achieved, then, before grant, the interpretation of the description (F- or F+) has to be introduced in the claim in order to replace the interpretation resulting from the wording of the claim (F) itself.
In other words, no inconsistency between claims (F) and description(F- or F+) should be present in a granted patent. This would avoid boards of appeal having to make interpretative sommersaults, what they, for good reasons, manifestly dislike.
It would also make life for post.grant courts as they could, prima facie, rely on the primacy of the claims, without having to dig deep in the description and having to make long analyses of what could well be the meaning/interpretation of a claimed feature in presence of discrepancy between claims and description.
That this way of acting implies more work for divisions of first instance is not to be denied, but would show that the quality objectives, it has set up itself, are taken seriously by the EPO
3.2 The effect of G 1/24
Avoiding inconsistencies between claims and description is exactly what the boards have decided in the decisions following G 1/24. No interpretative somersaults between claims and description are then required.
If there is a discrepancy between claims (e.g. achromatic+chromatic) and description (e.g. achromatic), this should in no way benefit to the applicant/proprietor.
In order to avoid this damageable situation for third parties, claims and description ought to be aligned with each other before grant and before maintenace in amended form. This means that the interpretation (F- or F+) present in the description has to be introduced in the claim to replace the interpretation resulting from the wording of the claim by the skilled person (F).
3.3 The patent cannot be its own dictionary
It is manifest that, after G 1/24, and the following decisions of the boards, once the principles established in those decisions have been adopted by divisions of first instance, the patent cannot any longer be its own dictionary, i.e. when the claim interpretation resulting from reading of the claim by the skilled person (F), it should not be possible to hide in the description a different interpretation (F- or F+).
This is a position which is not that adopted by the German Federal Court (BGH). Using the patent as its own dictionary appears always necessary when the description allows a different interpretation (F- or F+) from that resulting from the interpretation of the claim (F) by a skilled person.
As in general, civil law judges do not have a vast technical knowlege, and due to the fact that they have to deal with various technical domains, a proprer assessment of claimed features might remain necessary for them.
In view of the in-house technical knowledge, this is not necessary at the EPO.
The boards have made clear that they are not prepared to make interpretative somersaults to please the applicant/proprietor.
The notion of the patent being its own dictionary can be considered at the opposite of the concept of “primacy of the claims”, since then, the interpretation of the clam in the description (F- or F+) should always take precedence over the interpretation of the claim resulting from the wording of the claim as understood by a skilled person (F).
In case of terms that have no commonly accepted and clear definition for the skilled person (F*), and at the same time an interpretation be given in the description (IF*I), the situation is not different. What is stated in the description (IF*I) should be entered in the claim and replace the “odd” definition (F*). This avoids any inconsistency between claim and description.
Conversely, with G 1/24 and the decisions which have followed, it is clear that, if the “primacy of the claims” should be given any meaning, then the applicant/proprietor cannot leave in the description statements (F- or F+) which are at odds with what the claim says (F). If this is the case, there is a manifest inconsistency between claims and description. .
3.4 Primacy of the claims and the uniform concept of disclosure
The “primacy of the claims” does not mean that the description is to be ignored. G 1/24, and the following decisions, have made clear that the description needs to be “consulted“, and statements it contains (F- or F+), have to be compared with any possible interpretation (F) of the wording of the claim by the skilled person.
The “uniform concept of disclosure” does not mean that only what is disclosed in the description (F- or F+) has to be taken into account when interpreting the wording of a claim (F) by a skilled person. A claim has necessarily to be read in the light of the description, but any difference of interpretation between claims and description ought to be removed.
3.5 Directly and unambiguously derivable
3.5.a Added matter
The notion of “directly and unambiguously derivable” has not been superseded by G 1/24. Any amended definition in the description or in a claim, would be contrary to the criterion of a “directly and unambiguously derivable” from the original disclosure, i.e. to the “gold standard” as defined in G 2/10, if it gives the skilled person a new technical teaching.
It should not be forgotten that any amendment of an application or a patent, i.e. description and claims, can lead to an objection of added matter. Deleting an interpretation found in the description (F- or F+) and only keeping the original interpretation in the claim (F) can lead to a new technical teaching for the skilled person, hence to added matter.
A claim can be objected to under Art 123(2) as being the result of an intermediate generalisation, should some essential features necessary to achieve a given technical effect, originally disclosed in the description, is missing in the claim.
By introducing in the claim, the claim the missing essential features, but originally disclosed, the objection of added matter will be overcome, and the “primacy of the claims” is then respected.
3.5.b Priority
In order to assess whether a claim is entitled to a priority, the subject-matter of the claim has to be directly and unambiguously derivable from the whole of the priority document.
If the disclosure in the priority document gives a definition (F- or F+) different from that of the claim in the later application, when read by the skilled person (F), the priority can only be valid if the interpretation (F) is directly and unambiguously derivable from the definition given in the disclosure of the priority document. If this is not the case, then the priority is not valid as we would not be in presence of the same invention, cf. G 2/98.
If the later application claiming priority comprises the same definitions (F- or F+) in the description and in the claim (F), then the validity of the priority is to be acknowledged without any restriction, but there is a discrepancy between claims and description which ought to be removed before grant. By, depending on the situation, introducing the definition of the description (F- or F+) in the claim, the priority remains valid.
3.5.c Prior art
As far as prior art is concerned, any definition given in a prior art patent document, be it (F-), (F+) or (F), or any other technical information contained in said document, directly and unambiguously derivable from said patent document ought to be taken into account when assessing patentability under Art 52-57.
The technical information can certainly not be limited to the information itself directly and unambiguously derivable from the claim (F). Primacy of the claims does not mean that only the interpretation directly and unambiguously derivable from the claim wording in the prior art patent document ought to be taken into account. This boils down to an absurd interpretation of the notion of the primacy of the claims.
A prior art patent document is not to be treated differently than a non-patent document.
Any information directly and unambiguously derivable from a patent or a non-patent document ought to be taken into account when assessing patentability under Art 52-57.
3.6 Art 84
Although Art 84 is not a ground of opposition or invalidity, it nevertheless plays an important role, be it in examination or in opposition.
Art 84 is applicable not only in examination, but also in opposition or limitation. In the latter cases, within the limits of G 3/14. As soon that a claim is amended, other than by combination of granted claims, Art 84 applies as far as clarity is concerned, but the description has to be adapted pursuant to Art 84, support, irrespective of the amendment carried out in the claim.
Be it in examination or in opposition, if a dependent claim is added to an independent claim in order to limit the latter, any statement as to the optional quality of a feature in a dependent claim, has to be deleted in the description.
If the claim has been limited in view of the prior art, no features should be left in the description which could cast doubts about the scope of protection.
3.6.a Examples from the case law of the UPC
This is exactly what has been queried in the two decisions of the UPC-CFI, one of the LD Hamburg, UPC_CFI_278/2023, and one of the LD Paris, UPC_CFI_363/2024.
In both decisions, the UPC-CFI observed that the inconsistency between claims and description should have been removed before grant. It can only be agreed with those two decisions. It shows that in both cases, the description has not been “consulted” before grant, the examining division accepting the amended independent claim and sending the file to the formalities section.
4. Adaptation of the description to the claims
Although it is not part of the present topic, G 1/24 might have an influence on the decision to come in case G 1/25. In view of the diverging case law of the boards in this matter, in T 0697/22, the board referred a series of questions relating to the adaptation of the description to the claims to the EBA.
It does not appear acceptable that
– on the one hand, a claim appears limited in scope (F, eg. achromatic) for a skilled reader through its wording, but the description allows a broader interpretation (F+, e.g. achromatic + chromatic), and
– on the other hand, a claim appears broad in scope (F, e.g. achromatic + chromatic) for a skilled reader through its wording, but the description allows a more limited (F-, e.g. achromatic) interpretation.
When a feature in a claim is clear as such for the skilled person, it appears contrary to the notion of primacy of the claims, that third parties have to dig deep in the description, in order to check, whether a feature clear as such for a skilled person (F), can receive a different interpretation of the claim in the description (F- or F+).
Any inconsistency between claims and description has thus to be corrected before grant or before maintenance of a patent in amended form.
Some adaptation of the description to the claims will always be necessary, for instance
– when some original embodiments do not any longer fall under the granted claims. Those embodiments do not have to be deleted, but will have to be marked appropriately, as not representing the claimed invention;
– when the independent claim is limited with features from a dependent claim or with features from the description. In such a situation, the optional character of the corresponding features in the description ought to be removed.
It is only with claims and description aligned with each other, that a common interpretation of claims before and after grant will be achieved.
This will however not hinder national courts and the UPC, to apply Art 69 EPC and Art 1 of the Protocol on interpretation of Art 69 EPC, to decide infringement, for instance, infringement by equivalence.
It is thus not a mere coincidence that the decision UPC_CFI_278/2023 has been quoted in T 697/22, the referring decision in G 1/25.
It is therefore permitted to say that G 1/24 has paved the way for G 1/25, even if the two topics are different and should not be confused.
5. Conclusion
Primacy of the claims is a notion which is important for third parties. It has been shown above that, depending on the situation, the interpretation of the claim in the description (F- of F+) can or cannot supersede the interpretation given to a claim (F) when read by a skilled person.
This is the case when there is a discrepancy between claim an description. In order to remove any doubt about the interpretation to be given to a claim, and hence its scope of protection, the solution is to align claim and description before grant or before maintenance in amended form. It should not be necessary for third parties to dig deep in the description in order to find hidden interpretations.
If the inconsistency is not removed before grant or before maintenance in amended form, the different approaches suggested above here could be applied, since they would not allow the proprietor to be in the comfortable situation of coming up with one interpretation of the claim when it comes to validity, and a coming up with different one when it comes to infringement.
The whole proposition appears rather simple, and there is no need to refer to general legal theories or what could have been meant in G 1/24 when it comes to “consulting” the description. In all the situations explained above, the description has been “consulted”.
However, the result of the “consultation” does indeed depend from the situation.
It will take a certain time for examiners to apply the principle set out in G 1/24. Eventually, no different interpretation between validity and infringement should be possible. The applicant/proprietor will still receive a temporary monopoly for its contribution to the art, but I will not be allowed to play around at his discretion.
The present paper has not the pretence to deal with all possible situations, and as any rule, it has to accept exceptions, which should be as limited as possible. In any case, it is an attempt to reconcile interpretation of the claims in pre-grant and in post-grant procedures. This was actually the aim of G 1/24.
It still leaves post-grant courts free in their interpretation of the claims, even using the patent as its own dictionary, should there be an inconsistency between claims and description which has not been spotted before grant or before maintenance in amended form. It will also not hinder post grant court to assess infringement, especially infringement by equivalence.
I expect to receive a lot of contradiction, but I am up to the challenge.
Comments
4 replies on “Some ideas as how to deal in case of a discrepancy between claims and description following G 1/24”
Thank you for your elaborate overview.
But as you might expect I have a different view. It is related to two related concepts: inconsistency and ‘primacy of the claims’.
Let’s start with the second concept, primacy of the claims. Especially considering that this concept comes mostly from Art 69, I always understood that this means that the claims carry the most weight, and therefore that there has to be a significant burden of proof on the party wishing to interpret the claims differently than their plain meaning. However, such burden of proof can be met (at the discretion of the deciding body of course, knowing all facts), for instance, if the description contains a definition of a certain term, or if technical features that are uncritical to the inventive concept have generally known alternatives.
Now we come to the first concept, inconcistency. You wrote ‘The wording “inconsistency”, “discrepancy” or “incongruity” has the same meaning. It describes the situation in which the interpretation found in the description could lead to a different interpretation of claimed features by the skilled person when reading the claim.’ Going back to the primacy of the claims, I have to say no. Inconsistencies of the type you mention, are taken care of by the ‘primacy of the claim’. If, however, we are are talking about ‘should lead to a different interpretation’, it is quite a different story,
The mere fact that examples have more limited features is meaningless. Examples of the invention are always more limited than the scope of the claims. The mere fact that examples are perhaps broader, is also meaningless. In such a case they are clearly not examples of the invention, but examples of something else, perhaps of an earlier concept of what the invention was, or a genuine mistake by the drafter. If these ‘too broad’ examples are thought of as inert or irrelevant, and as a consequence there are insufficient, or no, examples of the invention left in the description, well, then we have an art 83 issue).
Whether these examples are called ‘according to the invention’ or not is irrelevant. If they are clearly not according to the invention (as defined by the claims, which have, let’s not forget, primacy ! ), well, then that is a simple objective fact, and the wording in the description can and should be ignored.(of course, in the extreme case that the number of examples not according to the invention is so large that the invention examples become a needle in a haystack, then it is a different matter, under Art 84)
(side note: I am not even aware of a strict requirement to mark examples as according to the invention or not according to the invention. In theory one can have 10 examples, and later work out which ones are according to the invention, and which are not. And there is no need to flag them. It can be useful to identify them, to clearly highlight the technical effect of the distinguishing features, but AFAIK this is not compulsory.)
Basically, we have two grey areas, and they should not be confused:
1) What is the precise meaning of the claims? This is something for EPO to address, because this is needed for examination. (G1/24 is concerned with this)
2) How much wider than the outcome of 1) is the scope of the claims under Art 69 ? This is mainly something for the judges to decide but (except in rare cases) of no concern to EPO. EPO can, and should, not predict what the judge will do after hearing arguments (that are unavailable to EPO).
‘Primacy of the claims’ is an issue to be discussed under grey area 2), and ‘inconsistencies’ is an issue to be discussed under grey area 1).
Bravo. An elegant and effective way to deter patent drafters from seeding their work product with Angora Cats . Just one snag though. What about that old prohibition on giving a claim one construction when judging infringement and a different one when the same court, in the same piece of litigation, judges its validity?
I will attempt an answer to my own question.
The court could say that if the claim, on its broad construction, can survive prior art attacks on its validity AND, if we were to give the claim its narrow construction the accused embodiment would still infringe, then the patentee wins. But in any other scenario the patentee loses (either because the claim is not infringed or because it is invalid, or both).
……….with the result that the more Angora Cats there are in the B publication, the more likely it is that the patent owner will lose!