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T 177/22 – Consistent interpretation of claims – With or without Art 69 and its Protocol?

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The patent, derived from the earlier application EP 08775906/2 171 360 relates to “Control of hot water”.

Brief outline of the case

The patent was maintained by the OD according to AR2.

The proprietor and the opponent appealed this decision.

At the end of the OP before the board, the opponent withdrew its appeal.

The board decided that the patent was maintained as granted, hence, at the end of the appeal, the opposition was rejected.

The case in interesting in that the board discussed at length claim interpretation.  

The opponent’s point of view

The opponent gave one interpretation when dealing with sufficiency of disclosure

The opponent submitted that a different, broader, claim interpretation had to be adopted for the assessment of novelty and inventive step than for the assessment of sufficiency of disclosure.  

The board’s decision

Interpretation of claims in general

The board reminded that a feature of claim 1 as granted is to be interpreted not only in the context of the other features in that claim but also in the context of the description as granted.

The board quoted a series of decisions:

T 367/20, Reasons 1.3.2 to 1.3.7, referred to the principles of claim interpretation as set out in Art 69 and Art 1 of the Protocol on the Interpretation. In T 367/20, Reasons 1.3.5, third paragraph and the following comparative one finds an analysis of national case law.

T 447/22, Reasons 13.1, referred to the general principle under the EPC that claims can be interpreted only in context, which includes the description and the drawings.

T 1473/19, Reasons 3.3 to 3.16.2, referred to G 2/88, Reasons 4, applying Article 69 EPC and the Protocol for interpreting “the technical features of the claim” when assessing extension of the scope of protection under Art 123(3). T 1473/19, Reasons 3.14, referred to the legitimate interests of the users of the European patent system in a common approach to claim interpretation. T 1473/19, Reasons 3.16 to 3.16.2 further referred to the primacy of the claims under Art 69 and the Protocol.

T 438/22, Reasons 5.5.3, referred to the overarching objective under the EPC that authorities, courts and the public interpreting the claims should, as far as possible, arrive at the same understanding of the claimed subject-matter as the EPO bodies deciding on its patentability.

G 6/88 (taken on the same day as G 2/88), Reasons 4, last sentence, considered the question before it as a question of law of general nature concerning novelty, and Reasons 3, first sentence, 6, 7, and 7.1, where the Enlarged Board (directly) applied Art 69 and the Protocol “to construe the claim in order to determine its technical features” when assessing novelty under Art 54(1). In G 6/88, Reasons 3, referred as well to Art 69 and the Protocol on its interpretation as “a mechanism for harmonisation” which provides a “method of interpretation of claims of European patents throughout their life”.

The board also referred to the decision UPC_CoA_335/2023, Grounds 4.d)aa), of the CoA of the UPC, in which the CoA referred to Art 69 and the Protocol as well as to G 2/88, and stating that the principles for the interpretation of a patent claim apply equally to the assessment of the infringement and the validity of a European patent; as to the harmonised approach on claim interpretation introduced by the EPC. In UPC_CoA_335/2023, Grounds 4.d)aa), the CoA held that the patent claim as not only the starting point, but the decisive basis for determining its subject-matter and scope of protection.

Same interpretation of a claim when it comes to all patentability criteria

The board held that a given patent claim’s subject-matter must be interpreted and determined in a uniform and consistent manner. This excludes interpreting the same claim differently when assessing sufficiency of disclosure on the one hand, and when assessing novelty and inventive step on the other hand.  (Reasons 3.1 to 3.4).

For the board, the “invention” within the meaning of Art 54(1), the “invention” within the meaning of Arti 56 and the “invention” within the meaning of Art 100(b) and Art  83, all refer to the claimed subject-matter.


Coherent interpretation

It can be agreed with the present board that a given patent claim’s subject-matter must be interpreted and determined in a uniform and consistent manner when it comes to sufficiency N and IS.

Where it cannot be agreed with the present board is in how far Art 69 and Art 1 of its Protocol of Interpretation has to play a role. That Art 69 and its Protocol play an eminent role when it comes to decide upon infringement is not at at stake. It is however debatable whether this should be the case when it comes to validity.

The only contact, albeit indirect, between Art 69 and procedures before the EPO lies in Art 123(3).  

First line of case law on interpretation

.All the decisions quoted by the present board have been taken by a small group of lawyers involved in all those decisions.      

This group of lawyers clearly favours the application of Art 69 and its Protocol of when it comes to validity.

They are representing a first line of case law when it comes to assessing claims and require the application of Art 69 and its Protocol.

Further to the decisions cited above one can add T 16/87, T 416/87, T 684/95, T 587/95, T 942/96, T 275/10, or recently T 450/20.

To the first line of case law, T 274/94 can be added as it decided that Art 69 is to be used when assessing inventive step.

Should the first line of case law prevail, then the whole coherent line of case law established by the EBA on these topics would become obsolete. Uncertainty would become a real problem.

Second line of case law on interpretation

This second line of case law is exemplified in T 169/20 according to which Art 69 is not the only guideline for interpretation of the claims in the EPC. The board considered that the provisions of Art 84 and R 42 and 43 also play a role, see Reasons 1.4.3 and 1.5.

In T 821/20, the board held that in it was neither necessary nor justified to interpret the claim in the light of the description and referred to T169/20 and T 1127/16, see Reasons 2.6. 1

T 30/17 referred to T 1279/04, Reasons 3 and T 1404/05, Reasons 3.6 provides further that Art 69 and its Protocol do not provide a basis for excluding what is literally covered by the terms of the claims.  

In T 1279/04, Reasons 3, the board stated that the application of the principles of claim interpretation as laid down in Art 69 and its Protocol was limited to the determination of the extent of protection which was primarily of concern in infringement proceedings or in opposition under Art 123(3).

Further decisions can be quoted

No recourse to the description in order to interpret the claims is to be found in  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.

Recourse to the description only in case of ambiguity, cf. T 481/95, T 169/20.

Use of Art 69 only in opposition when assessing Art 123(3), cf. T 1271/05, T 131/15 or T 42/22.

G 2/88 and G 6/88 are actually out of date

It has to be noted that G2/88 and G 6/88 have been decided by the EBA well before it took the decisions according to which the novelty test is also applicable in order to decide

– whether priority is validly claimed [Art 87], cf. G 2/98  

– if a divisional application is a true divisional [Art 76(1)], cf. G 1/05 and G 1/06  

– whether disclaimers are undisclosed in the original specification, cf. G 1/03, G 2/03, G 1/16

– are disclaiming part of the invention, cf. G 2/10.

Importance of the upcoming referral to the EBA on the application of Art 69

In view of the present decision, and its rather biased presentation on the application of Art 69, ignoring contrary decisions, the upcoming referral on the application of Art 69 is of utmost importance.

For historical reasons, the European patent system has been established in two distinct steps: the grant and the post-grant procedures. The grant procedure is valid for a much larger group of states than the post grant procedure before the UPC.

What is valid for infringement is not necessary what should prevail for grant and validity as both are separate in the European system.

It is clear that all the proponents of the UPC, e.g. Sir Robin Jacob, and recently a judge of the CoA of the UPC, want to impose the views of the UPC on the boards of appeal of the EPO. The present board agrees with this.

It is to be hoped that the EBA will, for the profit of all parties, be resisting the pressure so created, and hopefully decide only on the limited application of Art 69 and its Protocol in procedures before the EPO.

A possible consequence of the application of Art 69 and its protocol in examination/opposition

A good example of the distinction to be made between the pre-grant procedure and the post-grant use of Art 69 and its Protocol can be seen in the famous pemetrexed case as it was dealt with by the UKSC. That the UKSC decided that other salts could be covered by the claim is not disputed.

What was not correct was the reproach made to the examiner that it wrongly raised an objection under Art 123(2) against a general claim on pemetrexed. Only one salt had ever been originally disclosed and the applicant never made any attempt to show that its teaching could be generalised. In view of the case law of the EBA, the examiner had no other choice than to raise said objection. A lot of decisions of the boards have made clear that what might be obvious or looks equivalent to the skilled person has not been directly and unambiguously disclosed in the original application.

The German Federal Court claims to follow the EBA when it comes to added matter, but the contrary is true. The BGH has avoided revoking patents for added matter by using many tricks which have never been accepted by the boards: disclaimer, footnote etc.

When following the first line of case law, the whole system set up by the EBA and the boards would be jeopardised and any certainty would be gone. Examination would also be much longer. Is it really in the interests of the users to go along this line? Reasonable doubts are permitted.

Imprecise quotation by the board of the UPC decision

Under the reference UPC_CoA_335/2023 (NanoString v. 10x Genomics) one finds

  • An Order of the CoA of the UPC issued on 26/02/2024 in the proceedings for provisional measures concerning EP 4 108 782 –  Action number: UPC_CoA_335/2023 App_576355/2023
  • An Order of the CoA of the UPC issued on 11/03/2024 in the proceedings for provisional measures concerning EP 4 108 782 – Action number: UPC_CoA_335/2023   APL_576355/2023

When quoting a decision of the UPC it should be more precise as the passage referred to above is only found in the order issued on 26/02/2024.

The UPC should also provide a different reference for different actions, even related to the same case.

On the procedure

The present decision of the board has set aside the decision of the OD. This number is, in recent years, inordinately high, i.e. 60%+.

What is new in 2024 is that from the 73 decisions of rejection of the opposition up to the 21.05.2024, a total of 19,  were preceded by a different decision of the OD, either revocation of maintenance in amended form, i.e. 26%.

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10 replies on “T 177/22 – Consistent interpretation of claims – With or without Art 69 and its Protocol?”

francis hagelsays:

I generally agree with your reluctance to the application of Art 69 to validity assessment. The application of Art 69 should remain limited to the assessment of compliance with Art 123(3), its extension to validity assessment would be a distortion of the EPC. And I agree that this would entail major uncertainties during examination proceedings.

The proponents of this “reading” of Art 69 seem to utterly ignore the huge difference of context between examination and UPC proceedings. Examination relates to 200 000 applications per year and involves thousands of examiners, mostly working from home and under strong production requirements. The EPO case law must provide them with clear guidance and keep interpretation rules as simple as possible.

Avatar photoDaniel X. Thomassays:

Mr Hagel,

I thank you for your comments.

It can agree with you that, in procedures before the EPO, the application of Art 69 should remain limited to the assessment of compliance with Art 123(3), Any other application of Art 69 and, more important, of its Protocol of interpretation, should be proscribed at the EPO. As you rightly say, clear guidance has to be given to the examiners and interpretation rules should be as simple as possible.

The proponents of the use of Art 69, and its protocol of interpretation, in all procedures before the EPO do indeed seem to ignore the historical fact that with the creation of the EPO a clear divide has been introduced between patentability examination, i.e. granting of an IP title, and an infringement examination, i.e. post-granting use of the IP title.

Had the EPC been a convention corresponding to the various drafts of the Community/EU patent, i.e. an integrated system of granting and infringement/litigation, then Art 69 and its Protocol of Interpretation would not have been necessary.

That the UPC also has to deal with validity is due to the fact that if a patent is invalid, there is no infringement, but this was not the prime reason to create the UPC.

The proponents of what you call “this “reading” of Art 69” seem to utterly ignore the history of the creation of the EPO. They would actually like that the EPO, before taking any decision, even in examination or opposition, interprets the claim in the light of the description. This is what is practiced at the German Federal Court (BGH). This should not become the practice at the EPO.

Differences in case law between the UPC and the EPO in matter of validity will inevitably occur as the two bodies have different aims. This is however built in the system so created in 1973.

Trying to reshape the European patent system as it could have been set up in 1973 with the UPC is a bit late and out of place.

It is a bit late as the contracting states lived happily for 40 years with the system EPO/national courts. The necessity of the UPC did never impose itself as the number of transnational litigations was never very high and the cntenders had the financial means to deal with the situation.

It is out of place for two reasons: first, the different purpose of the two treaties and second, the fact that the EPC covers a much larger territory. In this latter respect, the EPLA would have been a good attempt as the coverage could have been identical with that of the EPC, but we all know what the CJEU held of it. In any case the dichotomy between examination/opposition was also built into the EPLA. EPC and EPLA have a different finality exactly as the EPC and the UPCA.

One possibility to avoid such differences in approach when it comes to validity, would have been to extend the opposition period under Art 99 EPC to the entire life of the patent and not to limit it to 9 months after grant. After all, a proprietor can request a limitation of its patent during the whole life of the latter. Why should then the opposition period be limited to 9 months?

This would however not have been to the liking of the proponents of the UPC, and as Max Drei said in one recent comment “The litigation community thrives on uncertainty and, it seems to me, is seizing the UPC opportunity, relishing the fun, the intellectual pleasure (and the attendant profit) of creating as much uncertainty as it can.” There is nothing much to add, but that the EBA in the upcoming referral should keep the clarity it has created in the past.

If in 1973, a consensus would have been achieved on an integrated patent system valid for all EPC contracting states, we would not have had to end up with first the EPC with its Art 69 and its Protocol of interpretation, then the defunct Luxembourg convention of 1975, followed later by the EPLA and now by the UPCA. It should not be forgotten that one country was at the forefront for refusing an integrated system as originally proposed. In the meantime the same has left the EU and the UPCA, although the latter is not so sure.

Max Dreisays:

These days, I am not a full-time practitioner, but one who is more or less retired, so not keeping up to date with the evolving jurisprudence, so forgive what follows if it is hopelessly shallow.

As somebody trained in the UK I think that when it comes to claim construction, there is a difference between i) understanding what the claim means and ii) what scope of protection it delivers. Art 69 EPC is relevant to the job of fixing the scope of protection but isn’t relevant to the task of deciding what the claim means.

The only textual meaning that has any value is the meaning of that text taken in context. So, of course (no brainer) one should construe a claim in the context of the description and drawings. That’s the task when looking at patentability and validity. Art 69 EPC has no relevance. Deciding what infringes is a different matter entirely. For that, Art 69 EPC is your compulsory starting point.

Or am I over-simplifying, to the detriment of the fair administration of justice, at the same time depriving the litigators of the complexity and uncertainty which they claim to be essential for doing justice between parties in dispute?

Avatar photoDaniel X. Thomassays:

Dear Max Drei,

Thanks for your comment.

I can only but agree with you that there is a difference between the meaning of a claim and its scope of protection. I also agree that when it comes to patentability and validity Art 69 should not play any role contrary to the wishes of certain legal members of the boards.

I would add that if the claim delivers a clear and comprehensible technical message, there is no need to look at the description as in the European system we have the primacy of the claims. In case of ambiguity, a recourse to the description might be necessary during examination or opposition procedures. But the description should in no case be the pretext to give a more narrower meaning to features found in the claims.

Art 69 should only be used at the EPO when it comes to Art 123(3).

Your are certainly not over-simplifying, you simply apply common sense. You are correct when thereby you deprive the litigators of the complexity and uncertainty which they claim to be essential. This essentiality has nothing to do with good administration of justice, but it helps them to thrive of the uncertainties so created. The reasons for this are more than manifest…..

Max Dreisays:

Daniel, your “primacy of the claims” mantra doesn’t convince me much, I am sorry to say. Other jurisdictions worship the primacy of the claim but nevertheless construe any given claim in the context of the description. They suppose that it is uncontestable, that any claim must be construed in context.

It seems that we are back to that difficult matter of who shall define a benchmark definition for the level of “conformity” which an EPO ED must insist upon, for compliance with the requirements of Art 84 EPC. I wonder, when will EPO management write its definition of what constitutes conformity, and give it to the EBA with instructions to implement it.

Avatar photoDaniel X. Thomassays:

Dear Max Drei,

I have not invented the concept of “primacy of the claims”. It is a notion which I have found in decisions of the UPC and of the EPO. You should thus try to convince the people having brought it in fashion.

As far as the scope of protection is concerned, I can agree with you “that any claim must be construed in context”.

If the claim is clear and delivers a clear technical message, I do not see any necessity to construe the claim.

That there are connections with the question of the adaption of the description to the claims, is manifest.

in the present case, the main question is not Art 84, support, but the application of Art 69 in procedures before the EPO. I can only repeat for example, that any feature in an independent claim cannot be left optional in the description before grant is decided.

I have personally some doubts that we will ever see a referral to the EBA about the adaptation of the description. In the case in which it has been announced, EP 3 094 648 (T 56/21) the standstill is overwhelming. After TPO and the approval of the applicant of the content of the TPO, nothing has happened. The file looks in deep sleep.

I see a simple reason for the reluctance to file a referral: Should such a referral be filed, the drop in production in DG1 and in the boards will not be to the liking of the management of the EPO and of the boards.

Max Dreisays:

Daniel, before we end, I wonder if there is a difference between us, as to what it means, to “construe” a claim. I think it means “to ascertain and grasp its correct meaning”. Thus, the task of “construing” the claim, however trivial it might seem, is an essential preliminary that an EPO Examiner, or indeed anybody else, must still perform (giving due account to the context in which the claim text exists) even when:

“…the claim is clear and delivers a clear technical message”

but you say that in such a case there is no need to construe it. Have you any thoughts on that difference, I wonder.

Avatar photoDaniel X. Thomassays:

Dear Max Drei,

We are on the same wavelength, and there is no difference.

It is clear that an examiner, or anybody else, has to “construe” the claim, i.e. to see what it is about and in which context it stands.

If a claim is clear (on its own) and delivers a clear technical message, there is no need to look in the description to further interpret/construe it.

Construing a claim does however not mean to give the features in the claim another meaning than that which results from its wording, and especially a more limited meaning.

If there is some ambiguity in a feature, it is manifest that a recourse to the description might be needed, in order to see what it could well mean. It can then happen that there is an inconsistency between the claim and the description. If that inconsistency/ambiguity can be resolved on the basis of the original disclosure, the corresponding objection under Art 84 can be overcome.

During examination and opposition construing a claim does not mean looking at its possible scope of protection under Art 69 and its protocol of interpretation. This is to be done in case of infringement.

francis hagelsays:

Recent decision T 2548/19 provides both an interesting illustration of holistic claim interpretation, reminder of the red line of the settled case law and forceful policy argument against reliance on art 69 in validity assessment.

Avatar photoDaniel X. Thomassays:

Mr Hagel,

Thanks for your new comment.

Indeed, in Reasons 6 of T 2548/19, the board has made clear that “According to established case law, for the purposes of judging novelty and inventive step, Article 69 EPC and its Protocol cannot be relied on to read into a claim an implicit restrictive feature that is not suggested by the explicit wording of the claim”.

I therefore consider T 2548/19 to belong to what I call the “second line of case law” and is in clear contraction with the position of the board in T 177/22.

It illustrates once more the necessity of a referral on the application of Art 69 in procedures before the EPO.

In my opinion, Art 69 should only be used when it come to assess the conformity of claims amended in opposition with Art 123(3).

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