The patent relates to a packaged detergent composition comprising a container that at least partly disintegrates in an aqueous environment.
Brief outline of the case
The opposition was rejected and the opponent appealed.
The board held that claim 1 as granted lacked IS over D1=EP 0 132 726 which was the first A document in the ISR established by the EPO. The ISR mentioned two further A documents.
AR 1, 3 and 4 were as well lacking IS over D1.
AR 2 was unclear.
The patent was thus revoked.
The case is interesting as it deal with claim interpretation and their support by the description, cf. Art 84, second sentence.
Regarding claim 1 as granted, both the proprietor and the OD considered that the wording “…the detergent composition having a fluid phase and containing a second container…” implied that:
i) the second container was contained within the fluid phase of the detergent composition, and that
ii) the fluid phase of the detergent composition was contained in the at least one compartment of the (first) container.
For the board, the wording of the claim thus encompassed embodiments in which the second container was contained in a different phase of the detergent composition (e.g. a powder phase or a solid phase), which also implied that the fluid phase of the detergent composition could be contained in the second container.
Since the proprietor indicated that there seemed to be contradictory approaches in the jurisprudence of the boards in the question of when and how the claims should be interpreted in the light of the description, the board provided a detailed discussion on this matter.
In T 16/87, the board concluded that the provision of Art 69(1) was applicable to the interpretation of the claims for the assessment of patentability. A similar conclusion was reached in recent decision T 1473/19 (Reasons 3.11.3), which held that Art 69(1), in conjunction with Article 1 of the protocol of interpretation, was applicable to the interpretation of claimed features when assessing Art 54, 56, 83 and 123(2).
In T 1473/09, the board added that the purpose of Art 84 was to enable a clear delimitation of the scope of protection in order to ensure that the extent of protection of the patent could be determined under Art 69. Art 84 was included in part III of the EPC on the European Patent Application and, as indicated in G 3/14 (Reasons 55), it played no role for the examination of granted claims in opposition proceedings, so its provisions could not constitute an applicable legal basis for the interpretation of patent claims in opposition or opposition-appeal proceedings.
In T 169/20, the board disagreed with the findings in T 16/87 and T 1473/19.
The fact that the provisions under Art 84 are not a ground for opposition does not detract from their validity as a legal basis for the development of arguments in opposition or opposition-appeal proceedings. This issue is addressed in G 3/14 (Reasons 55), which states that even though Art 84 cannot be invoked to object granted claims, it “may still be highly relevant in opposition proceedings in that it can influence the decisions under Art 100″, including those relating to patentability.
The board did also not agree in that Art 69 provides the only guideline for interpretation of the claims in the EPC and, considered that the provisions in Art 84 and R 42 and 43 set out the structure of the information in the patent or patent application to elucidate the subject-matter of the invention and thus provide guidance on how to interpret the claims for the purpose of assessing patentability.
The board agreed with T 1646/12 (Reasons 2.1) that the provisions of Art 69(1) do not apply to the interpretation of the claims for the purpose of assessing patentability but, in view of its explicit wording, to the determination of the “extent of the protection” of the patent or patent application, i.e. the object to be examined under Art 123(3) or in infringement proceedings. By contrast, the wording of Art 54 and 56 expressly states that the object to be examined for assessing novelty or inventive step is the “invention”. The basis for the interpretation of the claims for the evaluation of patentability must therefore be sought in those provisions of the EPC relating to the concept “invention”.
According to Art 84, the claims shall define the matter for which protection is sought, which in view of R 43(1) corresponds to the technical features of the “invention”. It is thus apparent that the object to be assessed under patentability corresponds to the technical features in the claims.
Support of the claims by the description
Also according to Art 84, 2nd sentence, the claims should be supported by the description, whose role is inter alia, cf. R 42(1,c), to disclose the invention as claimed in such terms that the technical context can be understood.
Art 84, 2nd sentence, provides a direct and unambiguous indication of the description’s function as a support for understanding the subject-matter of the claims. While this provision is primarily applied to require that the claims be brought in line with the technical teachings of the description (i.e. due to an essential feature missing from the claim), or that the description be adapted to disclose the same invention as the claims, these issues ultimately seek to eliminate inconsistencies in order to enable the supporting function of the description as an aid for understanding the claims.
The board thus considered that the condition “supported by the description” in Art 84 provides a legal basis for determining how and when claims should be interpreted in the light of the description. In particular, the wording of this provision explicitly limits the role of the description to an aid for understanding the subject-matter to be assessed under patentability, while implicitly confining this role to the exceptional cases where such support is both necessary and possible.
The support of the description should be resorted to only in case of need, since it is the wording of the claims which defines the matter for which protection is sought (i.e. the invention) and it would not be justified to seek help in understanding a subject-matter which is in itself clear.
Moreover, this support is only possible to the extent that there is a correspondence between the description and the subject matter of the claimed invention, so that the technical explanations in the description can serve to illustrate the meaning of the claimed features and not to limit or modify their scope with respect to what a person skilled in the art would understand when reading them.
The board further noted that similar conclusions on the limits of claim interpretation may be drawn from the meaning of the concept “invention”, i.e. the object to be assessed under patentability. In particular, according to R 43(1) and as concluded in G 2/98 (Reasons 2 and 9), the term “invention” in the EPC should be narrowly construed as the combination of technical features in the claims. As stated in T 1845/14 (Reasons 9.6), this construction of the term “invention” implies that the subject-matter to be assessed under Art 83, 87, 54 or 56 should not be interpreted restrictively or differently from what a skilled person would understand when reading the claims on the basis of technical aspects which are part of the description but not implicitly or explicitly defined in the claims.
T 1473/19-T 2475/18 were recently commented in this blog, however with respect of its applicability when assessing added subject-matter. The conclusion, contrary to that in T 1473/19, was that Art 69(1) and its protocol should not be taken into account when assessing added subject-matter.
The comment on T 2475/19 in the present blog was associated with a comment in which the board considered that, in order to examine the extent of protection of an amended claim in opposition, Art 69(1) was applicable.
The present decision, T 169/20, in deciding that if follows T 1646/12 also confirms T 2475/19.
At the end of the comments on T 2475/18 – T 1473/19, the question of a possible referral to the EBA was raised in view of the diverging decisions on the applicability of Art 69(1) when assessing added-matter.
The present decision, T 169/20, allows to extend the question of the applicability of Art 69(1) to any substantial patentability requirement under the EPC, i.e. Art 54, 56, 83 and 123(2).
It would thus be interesting to hear the EBA on the following questions:
- Should Art 69(1) and its protocol exclusively be used when determining the extent of protection under Art 123(3)?
- Can Art 69(1) and its protocol be used when assessing the patentability requirements under Art 54, 56, 83 and 123(2)?
- If the answer to question 2 is positive, which conditions should apply?
Question 1 has already been answered in G 2/88. It only has the purpose to make the situation perfectly clear and dispel any possible doubts.
In view of the very coherent line of case law established by the EBA with respect to novelty, inventive step added subject-matter and priority, Question 2 should be answered by the negative.
When discussing T 2475/18 – T 1473/19, it was already by no means my intention to restart the discussion on the adaptation of the description in order for it to support the claims.
In view of the developments with respect to the support of the description it is possible to consider that T 169/20, does not approve the contrary decisions T 1989/18, T 1444/20 and T 2194/19.
The above considerations do however show that with a rather “flexible” or even no adaptation of the description to the claims, we could end up with problems when it comes to novelty, added subject-matter or validity of the priority, should Art 69(1) and its Protocol be applicable outside the determination of the scope of protection.
This Pandora’s box should not be opened and the present case law of the EBA in all those points should not be “dynamically” interpreted.
It might please some users of the system when they are proprietors, but would make life much more difficult when they are opponents or third parties.
This would however not withhold national courts to have their own interpretation and application of Art 69(1) and its Protocol and to devise their own doctrine of equivalents.
On the examination
It is somehow unsettling to see that claim 1 as granted was eventually considered lacking IS over a document classified as technological background in the ISR established by the EPO.