CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 1354/18 –Linguistic or technical interpretation of a feature in a claim

chat_bubble 2 comments access_time 4 minutes

The patent relates to a simplified device of a camera unit of a motor vehicle.

Brief outline of the case

The OD has rejected the opposition and the opponent appealed the decision.

The opponent filed an appeal before notification of the written reasoned decision, but after delivery of the decision at the OP.

The proprietor considered that the appeal was not admissible, firstly due to the early filing of the notice of appeal and secondly due the lack of substantiation as the arguments raised in opposition were merely repeated.

The statement of grounds of appeal was filed within four months of the signification of the decision

The board held the appeal admissible, be it for the early filing of the notice of appeal and for the substantiation.

As to the substance, the board held that the interpretation of a specific feature “5” of claim 1 was too narrow and thus incorrect.

The board set aside the decision and remitted the file for further prosecution.

Linguistic or technical interpretation of a feature

The feature at stake, “5”, reads: “the camera unit (10) and the protective element (12) are movably articulated to each other”. In the language of procedure “die Kameraeinheit (10) und das Schutzelement (12) beweglich aneinander angelenkt sind“.

The OD’s point of view

In its decision, the OD found that feature “5”, if correctly interpreted, meant that the camera unit and the protective element were directly movable via a single joint, i.e. over a single axis or a single point. In doing so, the OD followed the proprietor’s argumentation. 

The OD did not accept the argument of the opponent based on a folding rule which is hinged over a plurality of joints.

The OD therefore concluded that claim 1 as granted was novel and inventive over the available prior art.

The board’s position

For the board, the OD apparently reached its conclusion by a purely linguistic analysis of the term ‘anlenken’: the term ‘anlenken’ was derived from the term ‘Gelenk =joint’, according to which two components were movably articulated to each other around a single axis or a single point in a joint. 

In this respect, the board pointed out that patent claims convey a technical teaching and are addressed to a reader with technical knowledge in the field of the application.

The correct interpretation of claim features must therefore always be determined by their technical meaning in the overall technical context of all features, from the point of view of the skilled person and not by a purely linguistic analysis of the wording of individual terms.

The terms used in patent documents must therefore primarily be given the meaning customary in the relevant prior art. In this context, it may well be that the skilled person in the relevant technical field understands certain terms differently on the basis of his general technical knowledge rather than on the basis of a purely linguistic analysis.

Similarly, it is possible that the patent specification itself attaches a particular meaning to individual features that deviates from a purely linguistic understanding; in this respect, a patent document may constitute its own dictionary.

The interpretation must lead to a technically meaningful result, whereby the broadest technically meaning is normally to be attributed to the claims.

Against the background of the principles just explained, the OD should therefore not have limited itself to its linguistic analysis for the interpretation of feature “5”; such an analysis can at best supplement or confirm the analysis of the technical meaning of the word, but not replace it.

When analysing the description, the board came to the conclusion that the expression “movably articulated to each other” according to feature “5” comprises, even from a linguistic point of view, both a direct and an indirect relationship between two elements and is thus to be understood broadly.

Contrary to the proprietor, the board considered that the terms “indirect” and “articulated” in the description must be read in conjunction with each other. This can be concluded from the fact that the second and third sentences the same specific part of the description clearly separate the cases of a direct and an indirect arrangement and that each of these sentences sets out an articulation as an embodiment of the relevant indirect or direct arrangement.

The board concluded that the opposition division interpreted feature “5” of claim 1 of the patent too narrowly and thus incorrectly. The wording “movably articulated to each other” does not exclude either an indirect connection or a connection via a plurality of joints.


The bard reminded clearly that claims and the description are directed at skilled person and not at linguists. The OD seemed to have forgotten this important point.

A similar stance is applied to the technical content of a disclosure when assessing added subject-matter. What matters is not the linguistic, but the technical aspects. This is also why literal support is not required.

 In T 846/13, the board held that the examination as to whether certain subject-matter is directly and unambiguously derivable is not a linguistic exercise alone, but has to take into account both the actual wording and the technical content as well as all other relevant circumstances to decide what was directly and unambiguously derivable.

In T 2619/11 the board reminded that what matters when deciding whether the subject-matter of the claims is not directly and unambiguously derivable from the original disclosure, is what is really disclosed to the skilled person by the documents as filed as directed to a technical audience rather than a philologist or logician, for which audience an attempt to derive information from the structure of dependent claims may lead to an artificial result.

Share this post


2 replies on “T 1354/18 –Linguistic or technical interpretation of a feature in a claim”

Max Dreisays:

Daniel, this looks like a decision well worth reading. Before I do that, I have a question, about how much the imaginary skilled reader knows about patent publications, A and B, and the function of their constituent elements (description, independent claim, dependent claims). I mean, long after T2619/11 issued, the English Patent Court realised that it ought to recognise (in the interests of doing justice between the parties) that the imaginary skilled person must be credited with an elementary understanding of the difference between a description of a single illustrated embodiment and a statement fixing the scope of protection. In one sense, the A or B publication discloses both a large balloon and a tiny diamond somewhere inside the balloon. Does the skilled person according to the established jurisprudence of the Boards at least grasp this difference?

We are all to some extent, logicians and philologists. The crucial difference in readership, to my mind, is between lawyers trying to prove a point, and skilled readers keen and hungry to “derive” from the document in question everything useful they can get out of it, about the technical content of the technical field in which the invention is set. At least in the USA, there are disputes about how lawyerly the deemed reader of the claim shall be. One hopes that the EPO Boards can achieve clarity on this issue.

And with that, I will turn to the Decision. Thanks again, for flagging it up.

Avatar photoDaniel X. Thomassays:

Dear Max Drei,

My reply to your question: “Does the skilled person according to the established jurisprudence of the Boards at least grasp this difference?” would be positive.

I would say yes as an A publication contains in general more features and embodiments than a B publication, whereby there are things in common which do not lead to a different interpretation. Both are addressed to the same skilled person. This does not mean that I wish to start here a discussion about the adaptation of the description.

I would also say also that the boards have achieved clarity about “the technical content of the technical field in which the invention is set”.

By the way, T 846/13 and T 2619/11 are actually decisions taken when assessing Art 123(2). In T 846/13 the board concluded to the presence of added matter. This was not the case in T 2619/11.

It brings me back to an old idea of mine: novelty and added matter are the two faces of the same coin. What you gain on one side, you lose on the other.

Leave a Reply

Your email address will not be published. Required fields are marked *