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T 1628/21 – On the application of Art 69 in procedures before the EPO when it comes to interpretation of the claims

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The patent relates to articles of apparel that provide enhanced body position sensory information to the wearer.

Brief outline of the case

The OD decided maintenance according to the MR=original AR4.

The board decided that claim 1 as maintained lacked N over A9/A9t=JP-A-2004-263362, not mentioned in the ISR established by the EPO.

The subject-matter of claim 1 of AR 1 was considered novel over A9, which was at the same time the CPA

As IS was not discussed, the board decided to remit the case to the OD for further prosecution.

The issue of contention between the parties regarding interpretation of claim 1 related to how the expression ‘engaged with’ in feature 2 was to be interpreted.

The case is interesting in that the board elaborated on the compatibility of certain principles of claim interpretation for the purposes of considering novelty or inventive step with Art 69.

The proprietor’s point of view

The claimed article of apparel includes both a garment structure as a shirt and a lower back position feedback system.

This was apparent from the structure of claim 1 whereby the semi-colon clearly separated features which were comprised in the article of apparel.

The claim should be considered as a whole, from which it was evident that the meaning of ‘engage’ was for one distinct part to interact with another part, rather than for one part to be inherently and inseparably comprised within the other part.

Accordingly, the claim wording required the article of apparel to have both a shirt which covered and provided a close fit to at least the lower back portion of a human torso, and a lower back position feedback system which was engaged with the shirt.

This excluded the interpretation that the lower back position feedback system could be an inherent part of the shirt. This understanding was also confirmed by dictionary definitions of the word ‘engage’.

The opponent’s point of view

The expression ‘engaged with’ was so broad that a garment structure with an integrally incorporated lower back position feedback system anticipated the subject-matter of claim 1. Resorting to the description for interpretation of the expression ‘engaged with’ in an effort to draw a distinction to the disclosure in A9 did not alter the objection, not least since there was no lack of clarity in the claim which needed to be resolved.

The board’s decision

In its decision, the board held that the principle of primacy of the claims seems to exclude the use of the description and drawings for limiting the claims if an interpretation of the claim in the light of common general knowledge already leads to a technically meaningful result.

Similarly, the principle, established by case law, according to which “limiting features which are only present in the description and not in the claim cannot be read into a patent claim” is also fully compatible with Art 69 and Article 1 of the Protocol.

The board reminded that the EPC is based on the principle of primacy of the claims in the determination of the scope of protection. This position is given in the first sentence of Art 69. However, as mentioned in the second sentence of this provision, “the description and drawings shall be used to interpret the claims”. The board also referred to T 1473/19, Reasons 3.16.1.

In this context, the board emphasised that, according to Art 69, the claims and the description, including the drawings, do not have the same status.

As mentioned in Art 1 of the Protocol to Art 69, under the principle of primacy of the patent claims, two “polar” models of interpretation are in principle possible, i.e. an isolated interpretation of the wording of the claims alone on the one hand and an interpretation which understands the wording of the claims merely as a starting point in the context of the overall disclosure on the other.

The established case law of the boards does not favour either of these “polar” models of interpretation, but something lying between these poles. In decision G 2/88, Reasons 4, the EBA already stated that the “object of the Protocol is clearly to avoid too much emphasis on the literal wording of the claims when considered in isolation from the remainder of the text of the patent in which they appear; and also to avoid too much emphasis upon the general inventive concept disclosed in the text of the patent as compared to the relevant prior art, without sufficient regard also to the wording of the claims as a means of definition.”

Application to the present case

The board further noted that, in line with established case law, it also saw no reason to avoid using a course between the two poles of interpretation of the claim in the present case.

The interpretation of the disputed word sequence “engaged with” is not a matter of an isolated interpretation of only the wording of the claim in the sense of a purely linguistic consideration of the same, rather the feature must be interpreted in the light of general knowledge of the person skilled in the technical field concerned.

This first requires an identification of the technical field resulting from the overall disclosure of the patent in order to determine the person skilled in that specific field.

Furthermore, the general knowledge of the skilled person ensures that the technical context in which the claims are situated is taken into account when interpreting the claims.

Applied to the present case, the board thus regarded the expression ‘engaged with’ as broad in the sense that it includes both:

  • the lower back position feedback system being an element separate from and attached to the garment structure; and
  • the lower back position feedback system being integrally incorporated into the garment structure.

The board could see no reason why the integral incorporation of the lower back feedback system into the garment structure would be a technically unreasonable interpretation of feature 2 of claim 1, i.e. why it should not mean that the lower back feedback system is ‘engaged with’ the garment structure.

Contrary to the proprietor’s opinion, this is not seen to extend the ‘normal reading’ of the expression ‘engaged with’.


In various posts on this blog I noted the different ways in which they apply Art 69 and the Protocol.

Some boards want a systematic recourse to the description with the possibility to always interpret the claims, even when it comes to Art 123(2), e.g. T 1473/19, T 1167/13 or T 2773/18. All those decisions go back to T 16/87.

Other boards want to limit the recourse to the description to very specific situations, one of those being the application of Art 123(3). This line of case law is exemplified by T 169/20, T 821/20, T169/20, T 1127/16 or T 30/17. All those decisions all go back to T 1279/04.

The present board seems to adopt a position somehow between the two above.

In view of the development of case law, a referral on the application of Art 69 and the Protocol appears a necessity.

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15 replies on “T 1628/21 – On the application of Art 69 in procedures before the EPO when it comes to interpretation of the claims”

Doubting Thomassays:

Mr Thomas, I am not sure that the “different lines” of case law on Art 69 EPC are all that far apart from one another.

For example, whilst you cite T 1473/19 as an example of a line of case law where Art 69 EPC is always used to interpret the claims, point 3.16.2 of the Reasons of that case very much limit the extent to which the Board was prepared to rely upon the description to interpret the claims:
“Moreover, while it cannot be ruled out ab initio that a certain claim feature may, when interpreted in light of the description and the drawings, have a different meaning than it would have when interpreted in isolation, it would be at odds with the principle of the primacy of the claims if this allowed claim features to be defined in the description at will, including in ways which are not at all compatible with the feature’s ordinary meaning. The primacy of the claims therefore also limits the extent to which the description may serve as a dictionary for the terms used in the claims.”

To the extent that there is a debate between different Boards, it appears to me that this relates to the meaning of “the principle of the primacy of the claims”. This is because:
– the Boards that will rarely, if ever, refer to the description rely upon “the principle of the primacy of the claims” to justify their position;
– “the principle of the primacy of the claims” is itself derived from Art 69(1) EPC; and
– ALL Boards therefore PURPORT to apply Art 69(1) EPC when interpreting claims, but just do so based upon different understandings of “the principle of the primacy of the claims”.

Personally, I would prefer it if the EPO could develop consistent practice for determining the subject matter that is disclosed by a document, regardless of whether the disclosure is in:
– a prior art document;
– the description of a patent or an application; or
– the claims of a patent or an application.

In my view, the way in which the EPO applies “the principle of the primacy of the claims” means that disclosures in claims are interpreted in a unique, largely acontextual manner that is inconsistent with the EPO’s approach to interpreting the other types of disclosure listed above.

Avatar photoDaniel X. Thomassays:

Dear Doubting Thomas,

When dealing with EP3076804 – T 439/22 on this blog, – I distinguished the following lines of case law when it comes to the application of Art 69 in procedures before the EPO.

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.

I would thus not necessarily agree with you that the lines of case laws are not so different from each other. I can however agree with you, that “the principle of the primacy of the claims” is a common line in all of those various lines of case law.

The way the primacy of the claims is then looked at under Art 69 is however quite different. Some boards stay with the claims, some look at the description in case of ambiguity, and some look systematically at the description.

As far as prior art is considered, it is the “whole content approach” which applies. This is particularly clear when it comes to prior art under Art 54(3). The European legislator made it quite clear, that the “whole claim approach” is not to be applied. The technical teaching might be embodied in the claims, but it has to be disclosed in the description.

When it comes to the description or the claims of a European patent/application, then, by virtue of Art 69 and Art 84, the claims and the description have to be looked at differently than in a document of the prior art. It might be your wish to have a consistent practice for determining the subject matter that is disclosed by a a prior art document and in a European patent/application, but this is not really possible in view of the differentiation between claims and description wanted by the legislator. .

Doubting Thomassays:

It is really the case that the provisions of the EPC leave the EPO with no option but to interpret the wording of the claims in a largely acontextual manner?

National courts are also bound by Art 69 EPC but yet have interpreted the requirements of that provision in a very different manner. For example, to quote Arnold LJ (from the Feb 2023 judgement in InterDigital v Lenovo), the approach to determining the extent of protection conferred by the claims is:
“…always….first, the wording of the relevant integer of the claim, secondly, the context provided by the specification, and thirdly, the inventor’s purpose”.

In essence, this just formalises the standard approach to determining the meaning of words of any legal document. That is, whilst the primary focus must always be the wording used by the author of the claim (or agreement clause) in question, it is essential to consider the CONTEXT of that wording, and thus to consider the remainder of the document in question as well as the purpose that the author intended the wording to serve.

So why is it that, starting from the same wording of the same provision (Art 69 EPC), the EPO believes that it must adopt a very different approach to interpretation, namely wherein:
– if possible, only the first of Arnold LJ’s step is considered (the wording of the relevant integer of the claim);
– if absolutely necessary (e.g. to resolve an ambiguity) the second step is considered; and
– the third step is NEVER considered?

The way that I see it is that the EPO insists upon adopting the plain (“normal”) meaning of the wording of the claims, whereas the national courts instead strive to understand the INTENDED meaning of that wording. Whilst there may be practical reasons for the EPO adopting their unique approach, I think that you can see that this is liable to lead to situations where the interpretation of a particular claim that is adopted by the EPO turns out to be not quite correct.

Max Dreisays:

Doubting, you suggest that there are “practical reasons” for the EPO’s intransigence. For me, the chief of them is that the EPO is applying Art 84 EPC rigorously, because Art 84 is not available to courts after grant, and so only the EPO can keep the courts free from the mischief of unclear claims in the hands of aggressive patent-asserters. The courts have to ask themselves what was the claim-writer using the language of the claim to mean because they can’t do anything else (such as finding the claim unclear).

The EPO finds in its public duty to examine for clarity, its duty to prevent issue of any claim less than100% clear claims, a perfect justification for its intransigence. It will assert that it is trying its best to i) do the job allotted to it by the EPC while ii) keeping its fingers as far as possible out of tasks which are the exclusive preserve of the courts.

What I want to know is, how much less than 100% clarity will the EPO tolerate, in the wording of a claim. There has never yet been a 100% clear claim because mere words can never capture a concept perfectly. Has the EPO ever declared how much less than 100% clarity it is able and willing to accept? Has the EPO ever noticed that during pre-grant prosecution when a claim has to be narrowed there is often a trade-off between satisfying Art 84 and Art 123(2) or does the EPO simply shrug its shoulders and suggest that Applicant should have done a better job of drafting the application.

Avatar photoDaniel X. Thomassays:

Dear Max Drei,

I can follow yow when you explain why the EPO is so intransigent when it comes to Art 84, clarity. I would like to add that the same applies when it comes to Art 84, support.

I can agree with you that 100% clarity is an aim which is difficult to achieve. I would reply that it depends on the actual case. The EPO has for task to achieve as much clarity and support as possible in order for national courts not to end up with claims were they can only guess about the subject-matter of a claim, what it is meant to protect or what is their support in the description.

I do not see a trade-off between Art 84, clarity and 123(2). A claim might be unclear, but this does not mean that in every case it as well infringes Art 123(2). It is better to leave a feature originally disclosed in a claim than to replace it by a synonym or the like. As you mentioned yourself, if the applicant/proprietor replaces it by a feature not directly and unambiguously derivable from the original disclosure, it will be infringing Art 123(2). By doing so, the applicant/proprietor puts itself in an inescapable trap and the patent is doomed to be revoked, at least before the EPO.

I do not think the EPO will shrug its shoulders. I wish just to remember that according to Art 113(2), the EPO can only decide on the text submitted to it, or agreed, by the applicant or the proprietor of the patent. The responsibility of the text submitted or agreed upon lies with the applicant/proprietor.

francis hagelsays:

My view of this decision is not quite in line with Mr Thomas’ comments.

I see this decision as providing a convincing approach as to claim interpretation under Art 69 for validity assessment in opposition proceedings.

Art 69 since it relates to the « extent of protection » must be applied in the assessment of compliance with Art 123(3). But Art 123(3) involves the term-to-term comparison of amended claims with the claims as granted. This is quite different from validity assessment, where the question relates to the claimed subject matter and the contribution of the description to the interpretation of claims may be a key issue. However, there is a logic in the application of Art 69 also to the assessment of validity.

The Board affirms (Reason 1.1.16) the principle of the primacy of the claims over the description under Art 69 and the weight of the CGK in the interpretation. No limitation of the claims can be based on the description. If the patent owner wants to rely in their argument on unclaimed features, they have to amend the claims to include these features.

The Board states (Reason 1.1.2) that « a claim should be interpreted as broadly as technically reasonable in the relevant art ». This is very important, since this rule exactly matches the rule of the settled case law applicable to the examination of applications.

The Board further addresses in Reasons 1.1.19 and 1.1.20 the weight to be given to the « disclaiming clauses » (examples « which do not form part of the present invention ») introduced by the applicant and/or before grant, by the ED at the 71(3) stage. The Board clearly holds that such disclaiming clauses cannot be used by the patent owner to try to limit the claims. What matters is the language of the claims, assuming they are clear in themselves. This implies that such clauses are worthless, and is a strong argument against the EPO current practice of requiring such clauses (or the deletion of the examples from the description) to remove inconsistencies between the description and the claims.

If on the other hand, such disclaiming clauses or deletions were deemed relevant to claim interpretation, this would likely raise an Art 123(2) issue, if they have entered after filing. A post-filing description amendment would arguably bring in content exceeding the original application, simply because it would alter the interpretation of the claims.

In short, this is a lose-lose situation for the applicant or patent owner. If the disclaiming clauses or deletions are irrelevant to claim interpretation, they are worthless. If they are relevant, they likely raise an Art 123(2) issue in court proceedings.

A very interesting case to be watched is related to the recent UPC Appeal Court decision 10x genomics vs Nanostring of 26 February relating to a PI request. The patent in suit EP 4 108 782 has been opposed before the EPO by Nanostring in July 2023. In February, Nanostring has submitted fully-developed complements relating to the construction of the claims, focused on a number of terms used in the claims and explicitly inspired by Nanostring’s arguments submitted in the UPC proceedings.

Avatar photoDaniel X. Thomassays:

Dear Mr Hagel,

When the EPO decides that the subject-matter of the claims are novel and inventive with respect to the available prior art, it can indeed be considered as deciding on the validity of the patent. In my opinion validity of the patent with respect to the prior art has to be looked at differently from the scope of protection, as the latter is a different matter. Not only it has to be assessed under Art 69, but also according to the Proptocol.

Unless in opposition, by virtue of Art 123(3), it is not the role of the EPO to decide as such what is the scope of protection. Art 123(3) simply requires that the scope of protection should not be extended, whatever the one understands under scope of protection.

The way the scope of protection has to be apprehended is best defined in G 1/93. Art 69 is mentioned at numerous places in G 1/93, whereby the primacy of the claims is clearly brought forward. Deleting a feature in a granted claim or changing from a use claim to a product claim is increasing the scope of protection. This is relatively simple to assess. It is not the role of the EPO to elaborate further on the scope of protection, as its primary job is not to define any freedom to operate or what is eventually covered according to the Protocol on interpretation.

It is because some boards have proposed to take into account Art 69 in order to interpret the claims in the light of the description, that a confusion has been created between the two topics.

I can accept that when an applicant states that some embodiments are not falling under the claims or some features are not any longer optional, then he disclaims the corresponding features. But this is the price to pay, to obtain the required alignment of claims and description as required under Art 84, support.

I am still waiting to see one European Patent revoked by a national court or the UPC if the description has been adapted to the claims as required by the EPC. Only a decision in the UK on a UK patent has been shown, and in this case the amendment was post-grant.

I have said many times that amendments imposed by an ED at the R 71(3) stage are not acceptable and it is legitimate that applicants do not accept them. But the issues should not be confused. It would be better to give time to EDs to better search and examine, and not push them to bring amendments shortly before grant so that they can show they have done something.

EP 4 108 782 has not only been opposed by Nanostring, as two other oppositions will be filed. The Court of Appeal has reversed the PI delivered by the Munich Local Division of the UPC. That the UPC like a national court looks at the patent in a different way than the EPO is quite normal. It does however not imply that the boards of appeal of the EPO will follow the case law of the UPC, and vice-versa.

Max Dreisays:

I read with great interest the comment from Francis Hagel and (on this occasion) found it very persuasive.

I recall the energetic debate when the “inescapable trap” set by the interaction of Art 123(2) and 123(3) was news. Ever since, it has seemed to me the world’s best real example of a proverbial CATCH 22 situation. But now, F Hagel flags up another nice CATCH 22 situation or, perhaps better labelled (as by FH himself) as a “Tails you lose, heads I win” situation.

Just as the inescapable trap survived all assaults on it I expect so too to see the T1628/21 line on the applicability of EPC Art 69 to gather force, from now on.

Whatever, though. It’s all grist for the mill, when eventually the EBA takes on the task of telling us all what is the relevance of Art 69, EPC, otherwise than when Art 123(3) EPC is being applied.

Any thoughts, Daniel?

Doubting Thomassays:

So, to summarise, the potential effects of EPO-mandated amendments to the description are as follows.

1. They align the description with an interpretation that IS in accordance with the extent of protection afforded by the allowable claims.

This can occur by either:
(a) the amendments precisely aligning with the extent of protection that national courts would invariably afford to the claims; or
(b) the amendments serving as a self-fulfilling prophesy, i.e. changing the text of the description in such a way as the national courts will, by applying Art 69 EPC and its Protocol, inevitably arrive at much the same interpretation of the claims as that adopted by the EPO’s Examining Division.

2. They align the description with an interpretation that is NOT in accordance with the extent of protection afforded by the allowable claims.

It is only under option 1(a) where it is certain that, if accepted, the amendments will not harm the legitimate interests of the applicant, either by generating grounds for invalidity (under Art 123(2) EPC) or by affording an extent of protection that is narrower than that to which the applicant is entitled.

However, given that the EPO does not apply Art 69 EPC and its Protocol, what are the chances that Examining Divisions will invariably adopt the “correct” interpretation of the claims? Moreover, as you point out, under option 1(a), the amendments to the description are essentially superfluous as they do not in any way affect the interpretation of the claims.

Thus, even in the circumstances where an ED happens to hit upon precisely the right claim interpretation, it serves no practical purpose whatsoever to amend the description to align with that interpretation.

This leaves option 1(b) as the sole potential (PRACTICAL) justification for the EPO’s current description-adaptation practice. In other words, the EPO’s current practice seems to be based upon the frankly absurd premise that, to ensure that national courts do not get things wrong, the EPO needs to provide them with clear pointers to the “correct” interpretation of the claims.

If I understand Mr Thomas’ position correctly, none of these PRACTICAL matters should affect the interpretation and application of the support requirement of Art 84 EPC. That is, I understand his position to be that the support requirement has a particular meaning (i.e. what is claimed must be described AND what is described must be claimed) and that the downstream effects of this interpretation of Art 84 EPC are not the EPO’s concern. Whilst I can certainly understand that position, I would argue that the issues discussed above prove that the EPO’s interpretation of the support requirement “leads to a result that is manifestly absurd or unreasonable”.

Avatar photoDaniel X. Thomassays:

Dear Max Drei,

There is not much to say, but to hope for a referral to the EBA in matters of application of Art 69 in procedures before the EPO other than when it comes to the application of Art 123(3).

As any referral, it bears certain dangers. Irrespective of the fact that the EBA might rewrite the questions, so as to be able to give the answers it thinks fit, the answers will depend to a large extent on the questions referred to the EBA. One thing is quite surein case of a referral: the number of amicus curiae briefs might reach a peak.

For me T 1628/21 is a further path on the way to a referral.

I can understand the board’s attitude not wanting to refer questions on the application of Art 69 in procedures before the EPO. It gives them a maximum of “freedom to operate”, i.e. to choose the interpretation of the application of Art 69 which best fits their intentions.

If the boards are so unwilling, it might be the moment for the president to file a referral. As the referral might have a direct influence on the production/productivity, he might not be so keen for a referral.

When it comes to the application of Art 84, support, neither the president nor the chair of the boards will be keen, as then the production would come to a near standstill.

francis hagelsays:


Thank you for your appreciation.

The Catch 22 phrase came to my mind after posting the comment. But I am not sure it fits the EPO’s adaptation of description syndrome. As I understand the Catch 22, it refers to a situation in which you have to make a decision with two options and each option has serious drawbacks.

In the case of an adaptation of description imposed by the EPO, this is not a decision of the applicant but the EPO policy which creates the awkward situation. The EPO though adamantly denies any responsibility if the adaptation violates Art 123(2), based on the argument that the applicant had the opportunity to challenge the amendment and is solely responsible for the content of the granted patent.

In view of the hyper-stringent approach of Art 123(2) at the EPO, the risk is not just theoretical. You probably remember this unfortunate » catastrophic comma loss » decision T 1473/19 where the Board revoked the patent for new matter after the ED had missed a comma in a claim amendment. No mitigating circumstances were considered in this case although the defect was of the EPO’s own making.

Avatar photoDaniel X. Thomassays:

Dear Mr Hagel,

As far as T 1473/19 is concerned, it is established case law that the ultimate responsibility for drafting the description and of the claims lies with the applicant/proprietor. In the procedure ending whit said decision, the applicant accepted the correction in the communication under R 71(3). What happened is tragic for the applicant/proprietor, but it was normal that no mitigating circumstances could be envisaged in favour of the latter.

I remember a case in which the examiner objected to added matter at four places in the claim. In reply to the objection, the applicant amended the claim and stated in its letter of reply that all four places were corrected. Later in opposition, it turned out that one correction was missing. In view of the statement in the reply, the examiner trusted the applicant and proposed grant. Should he be blamed? I do not think so.

It is also to be noted, that in Reasons 4.3 and 4.4 of T 1473/19, the board explained why both the interpretations of the claim were technically reasonable. The board even added that “there is no principle of claim interpretation according to which a claim should be interpreted in a manner which makes it compliant with Article 123(2) EPC”. Even with Art 69, it i not possible to interpret a claim so that it does not infringe Art 123(2).

Doubting Thomassays:

Max, the “practical reasons” I had in mind were not connected to clarity of the claims. Instead, I was thinking of the fact that, as things currently stand, examiners have neither the time nor the resources to commit to the potentially difficult task of determining the INTENDED meaning of the terms of the claims (as opposed to the plain meaning).

Frankly, I cannot say that I have ever experienced a situation where an EPO examiner is striving for “100% clarity” (whatever that might mean!). However, I have experienced the exact opposite situation, in that I have regularly, including recently, observed the grant of patents to third parties based upon claims which include terms that are manifestly unclear.

Regarding the different interpretation approaches adopted by the EPO (“plain meaning” for claims vs. “whole contents” for prior art documents), it strikes me that this could lead to some peculiar situations where:
– there is an earlier and later EP application, both of which were filed by the same legal entity; and
– the earlier application is available against the later only for the assessment of novelty (i.e. under Art 54(3) EPC).

If the description of the earlier application contains an unusually broad definition of a term used in claim 1 as filed, it seems to me that the different interpretative approaches will lead the EPO to:
– ignore that broad definition for the purpose of assessing patentability of claim 1 of the earlier application; but
– take that broad definition into account to the purposes of assessing novelty of the later application over the subject matter disclosed in claim 1 of the earlier application.

In other words, it seems that the EPO’s different approaches will lead to them telling the same legal entity that the same wording of the same claim either:
– has a narrow meaning (i.e. is NOT interpreted in the light of the description) for the assessment of patentability of claim 1 of the earlier application; or
– has a broad meaning (i.e. IS interpreted in the light of the description) for the assessment of novelty of the claims of the later application.

Taking such obviously inconsistent positions for the examination of different applications hardly seems like the most sensible position for the EPO to take!

Finally Someone Gets Itsays:

Thank you for succinctly setting out how absurd the EPO’s position can be. Article 69 codifies how patent documents are to be interpreted: the description shall be used to interpret the claims. This is consistent with how all legal documents are interpreted: in context and in their totality. To use the ‘primacy of the claims’ to eliminate the use of the description can only lead to absurd consequences as you have rightly noted. One hopes that the enlarged board with its external members would recognize the absurdity that results when we ignore the context surrounding the claims.

Doubting Thomassays:


The absurdity noted in my earlier comment is not really the one that bothers me most. That title belongs to the EPO’s practice of insisting upon amendments that align the description with the “plain” meaning of the claims. This means that the EPO starts from a dubious position (ie NOT the correct interpretation of the claims) and then tries to imprint that onto the text that they previously ignored … but should have instead used to help them arrive at the correct interpretation of the claims.

As you can appreciate, this practice really is akin to adding extra layers to a castle built upon sand (or, if you are a fan of Monty Python, a castle built in a swamp). This can really only end with the castle burning down, falling over and then sinking into the sand / swamp. Of course, none of this will bother the EPO, as they will not have to deal with any of the consequences.

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