Today was the big day. The OP in case G 1/24 took place. The OP was streamed to the public.
The EBA was really silent during the OP, and only one question was put to the opponent.
A condensed look at the OP and at the position of the different payers
As far as the position of the parties and of the president is concerned, there is nothing new with respect to the written submissions.
The opponent
The opponent would like a systematic reference to the description in procedures before the EPO. It called it the “diamond interpretation”. Question 1 should in any case be answered positively. The opponent considers that there is no extra burden for an OD to look at the description. What is done at national level should be done at the EPO. For the opponent, looking at the claims would improve legal certainty.
The proprietor
The proprietor considers the referral not admissible, but in any case Question 1 should be answered in the negative. For the proprietor, the patent is at the same time a technical document and a legal document. There is however an asymmetry enshrined in Art 84, referring to the claims which have to be looked at with the eyes of a skilled person. He insisted on the primacy of the claims. Inerpreting the claims in the light of the description would decrease legal certainty.
The President of the EPO
For legal certainty, the representatives of the president of the EPO, the same interpretation of claims should apply in pre- and post-grant procedures. The EPC is consistent in itself and comprises next to Art 69 also Art 84 and R 42-43. There is no difference in interpretation between the EPO and national jurisdiction or the UPC.
If the description allows a different interpretation than what the skilled person reads in the claim, there is an inconsistency between claims and description, and either the claim or the description ought to be amended.
This is why the president of the EPO considers adaptation of the description as being an important aspect which touches the question raised by the referring boards.
Although Question 1 should be answered negatively, the representatives of the president were very keen to explain that in the way of the EPO works, there is no difference to be perceived between the EPO and national courts. The description is always taken into account and certainly during the search. Examination should be such that claims and description are brought in coherence. Reality might somehow be different.
Comments
It has nevertheless to be agreed with the opponent, that in EP 3 076 804 B1, there is an inconsistency between claim 1 and § [0035] of the description when it comes to “gathered sheet”. Gathered sheet receives a broader definition in the description. This inconsistency should have been queried by the ED.
The insistence of the representatives of the president on the adaptation of the description being linked to the present referral was however noticeable.
I doubt the EBA will broach this subject in the present referral, as a referral on this topic is in the pipe line in case EP 2 124 521 B1 (T 697/22), commented in the present blog. By a communication of 26.03.2025, the board invited the parties to comment the questions it intends to refer to the EBA. A corresponding decision to refer should be despatched on 30.07.2025.
Both parties are right to a certain extent, and the president of the EPO has, for political reasons, to be very careful what is said in its name, without increasing the workload of DG1. Application of Art 69(1) and the Protocol would, without doubt, increase the workload of the EPO.
Streaming could have been better and beside the chair of the EBA, the rapporteur and the chair of the LBA, the other members of the EBA were barely seen. The representatives of the parties or of the president, but the latter never all together, could be seen correctly, but not any possible reaction of the members of the EBA. Nothing new under the sun.
Only the rapporteur asked whether Article 1 of the protocol goes beyond Art 69.
How will it continue?
The chair of the EBA announced publication of the minutes and of the decision asap, whatever this might mean. I doubt however that the tenor will be published quickly and the decision months later, cf. G 1/21.
Without a crystal ball, no prediction on the outcome can be made.
However, it would not come as a surprise if the EBA would confirm the primacy of the claims and that recourse to the description should not be considered if the claim is, on its own. clear for a skilled person, as required by Art 84.
In such a situation, a diverging interpretation of the claim in the light of the description should not be taken into account. Neither a limitation or a broadening in the description should be read into the claim.
Even if the answer to Question 1 is positive, doubts are permitted that the answer will be a clear YES, irrespective of the situation. It could be a YES, but, or even a NO, but.
More important will be the reply to question 2.
Art 69(1) and Art 1 of the Protocol can lead to opposite conclusions depending on the forum.
In the case of EP 3 466 498 B1, the LD Düsseldorf and the Swiss Patent Court came to a different interpretation of the same claim and to diametrically opposed conclusions with respect to validity, however taking into account the same prior art. The LD Düsseldorf decided that the patent was valid and infringed. The Swiss Patent Court decided that the patent was invalid. I am not saying which court is right, although I have my favourite. What is claimed appears pretty basic to any electronic engineer. The Swiss Patent Court applied the PSA as it is done at the EPO. The PSA does not seem to make any inroads at the UPC.
Nevertheless, the two diametrically opposite first instance decisions, both interpreting the claims in the light of the description, show that Art 69(1) and Art 1 of the Protocol do not bring the clarity hoped for by all those wanting a systematic application of those two regulations in procedures before the EPO. .
Some further thoughts
I link the necessity of always interpreting the claim in the light of the description to the lack of technical knowledge of civil law judges in national jurisdictions, and for a large part at the UPC.
It is only if they understand what is claimed, hence have interpreted the claim, and defined the skilled person that they are prepared to take a decision.
This is also the reason why the notion of OTP and the PSA are foreign to the UPC and national jurisdictions. In order to show a lack of IS, the skilled person, which have always to be defined beforehand, has to find in the prior art an incentive to come to the claimed solution, whilst sticking to the problem mentioned in the application/patent.
At the EPO, it is very rare that the skilled person is at all defined. This is due to the fact that, even at the BA level, there are always two TQJs acting.
This might be an unorthodox thought, but it is the result of a recent seminar I participated. In this seminar, various decisions of the UPC, on substantive matters, like extension of object and IS, as well as purely procedural matters, were discussed and compared with the way those topics are dealt with by the EPO and German courts. This was clearly explained by a former German judge, who further welcomed technical judges in German civil courts.
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