EP 2 988 183 B1 relates to a system for observing and/or controlling a plant.
Brief outline of the case
The patent was revoked and the proprietor appealed.
When defending the patent, the proprietor argued that the patent should be taken as its own dictionary when interpreting the claim.
The board disagreed and confirmed the revocation.
The proprietor’s point of view
The proprietor argued that, in particular pursuant to Art 69(1), the description should be taken as the basis for interpreting the patent claims, as the patent constituted its “own separate dictionary“.
The skilled person would therefore infer from specific features [f) and g)] that there must implicitly also be a protocol implementation. However, this implementation was not disclosed in D1. Even if telecontrol arrangements with protocol converters are known in principle, the novelty of the present invention is that this conversion takes place in the “cloud”.
The board’ decision
The board held that, neither the wording of Art 69(1) [“The description and drawings shall be used […] for the interpretation of the claims”], nor the established case law of the boards of Appeal can provide a basis for the alleged concept of the “patent as its own dictionary“, see e.g. T 169/20, Reasons 1.3.4.
Such a concept could in fact evade the objective comparability of a patent with the respective prior art, which in turn would be difficult to reconcile with the requirement of legal certainty.
Rather, in the view of the board, the description and the drawings can at best be used in the interpretation of the claim to determine the skilled reader and his point of view from which a claim is to be interpreted, see e.g. T 1924/20, Reasons 2.7; T 1628/21, Reasons 1.1.15.
In the present case, the skilled person in the field of automation systems would generally understand a “conversion”, as argued by the opponents, as a modification of the messages with respect to the characteristics “control centre specific” or “field device specific”.
However, these changes may not necessarily specify a protocol, but may also relate, for example, to the content, the scope of the information or simply the origin or destination. Moreover, the protocol conversion is only introduced in the patent in suit itself for an advantageous embodiment, cf. paragraph [0021].
In the claims, the protocol conversion is only introduced in dependent claim 2. This supports a fortiori the above interpretation, according to which claim 1 cannot be implicitly limited to a conversion of the messages on the basis of a protocol conversion.
Comments
It is interesting to note that the present decision has been issued on the same day, 24.06.2024, as the referring decision, T 439/22, for G 1/24.
By noting that dependent claim 2 actually deals with what the board refuse to interpret into claim, it confirms that a more limited interpretation of the wording of a claim cannot find its source in the description. It is to be hoped that the EBA confirms this position.
That a patent cannot be considered as its own dictionary has been clearly expressed in T 1271/05, Reasons 4.2 and 4.3.
It is in any case manifest that an advantageous embodiment/feature cannot be read as limitation in an independent claim.
Art 69(1) and Art 1 of the Protocol of interpretation vs. separation between grant and infringement
The board made clear that in no case the objective comparability of a patent with the respective prior art should be jeopardised as this would be detrimental to legal certainty. That in infringement a claim might receive a broader interpretation is still possible.
In T 1271/05, Reasons 4.3, the board held that the provisions of Art 69 only apply to the definition of the extent of protection, i.e. essentially before national courts in the post-grant phase, a distinction between various terms made in the description of a patent has no impact on the interpretation of the claim if such a distinction is not clear from the wording of the claim alone. Without saying it, this statement expresses the primacy of the claims.
In spite of what has been said in UPC decisions, due to the fact that there is a clear separation between the interpretation of a claim during prosecution, i.e. before grant, and its post-grant interpretation. This is a direct consequence of the setting up of the EPC in which grant is not dealt within a uniform combining grant and infringement as it is the case in national systems.
The present decision shows how important the EBA’s position in G 1/24 will be.
Stay of proceedings
The president of the EPO has decided that in spite of the referral, no files will be stayed because of the referral. This stay does not apply to the boards. Will boards refrain to issue decisions relating to the questions in G 1/24? There is no reason to do so until G 1/24 is issued.
On the procedure
D1 was cited in the ESR as of category X, whereby a further document of category A was quoted in the ESR.
In view of the decision of the OD and of the board, the ant of a patent appears questionable. Novelty objections were sustained up to a point and later only clarity was queried.
During the whole examination, the then applicant insisted on the fact that the novelty of the present invention lies in that the conversion takes place in the “cloud”.
Comments
5 replies on “T 1830/22 – The patent is not its own dictionary”
You claim that “there is a clear separation between the interpretation of a claim during prosecution, i.e. before grant, and its post-grant interpretation”. However, you cite no legal basis for this proposition. As far as I am aware, the ONLY principles that EPC sets out for determining an “invention” are those of Article 69, ie PRECISELY the same principles as it sets out for determining “extent of protection”.
Also, whilst you argue that Art. 69 EPC should NOT be applied during prosecution, you appear to cite with approval the EPO’s reliance upon the principle of primacy of the claims. However, your positions on those points appear to me to be inconsistent. This is because the principle you believe SHOULD be used during prosecution (ie the primacy of the claims) derives solely from the provision that you believe SHOULD NOT be applied pre-grant, i.e. from (the first sentence of) Art. 69(1) EPC.
Either Art. 69 EPC (and Article 1 of its Protocol) applies during prosecution or it does not. One cannot simply pick and choose which principles deriving from that Art. 69 one wishes to apply (either pre- or post-grant).
Indeed, if the EPO can apply principles according to the first sentence of Art. 69(1) EPC, what rule of law or logic PREVENTS the EPO from also applying principles according the SECOND sentence of that SAME PROVISION:
“Nevertheless, the description and drawings SHALL be used to interpret the claims”.
To me, there is no escaping the conclusion that the presence of the word “shall” in that sentence means that it would be wrong in principle for the EPO to apply the first sentence or Art. 69(1) but not the second.
Therefore, whilst I have tried hard to understand the EPO’s (essentially acontextual) approach to claim interpretation, I cannot help but conclude that it has NO LEGAL BASIS under the EPC.
@ Doubting Thomas,
I fear that we are on the verge of engaging on a new round of discussions as we had before, when it came to Art 84, support. There you also claimed the absence of any legal basis.
My position I very simple and it is based as for Art 84, support, on a long line of case law.
The description should not be taken as allowing either a much broader definition or a much more limited definition of a feature in a claim ot of the whole claim.
The claim has to be commensurate with the contribution to the art and every third party should know whether it is infringing or not. This is also the reason that in order to obtain a grant, claims are to be filed in the two other official languages. It is difficult not see the primacy of the claim in this requirement.
Most national legislations have also made clear that if the translation of the claims and of the description is more restricted in scope than the claims in the language of proceedings, then the limited scope prevails. There as well, it is difficult not see the primacy of the claim in this position.
If the description allows a much more limited interpretation of the claim, this more limited interpretation should find its way in the claim. The same applies when the description allows a much more broader interpretation. We are thus quasi back on Art 84, support.
One should not forget that the EPC is the only legislation on patents dealing only with grant, and hence is which is not part of a unified system in which both grant and post-grant actions are integrated. This rendered necessary the creation of Art 1 on the protocol of interpretation on Art 69.
Art 69 and the protocol on interpretation is primarily for use of national courts in case of infringement. This is also the result of a long line of case law.
You might here as well consider that the case law is wrong, but I do not share this point of view.
I just hope that G 1/24 will bring the necessary clarification.
Mr Thomas, I certainly do not want to enter into another endless (and fruitless) round of exchanges where we end up talking at cross purposes.
However, in case it helps to avoid further misunderstandings, permit me to explain why I am not persuaded by your references to (principles from) established case law. In essence, my preferred approach to assessing any (correct) legal standard under the EPC starts by:
– considering the provision of the EPC in question; and
– interpreting that provision according to the methods permitted by the VCLT.
Whilst I find established case law to be helpful in my deliberations, I never assume that any case law (no matter how well established) has reached precisely the correct interpretation. Instead, I consider both the facts underlying each case and the reasoning of the Board before determining whether the conclusions and principles set out in the Board’s ruling are, in my view, completely robust.
In essence, I try to adopt a “back to basics” approach that does not rely upon conclusions reached by others, unless I have independently assessed (and found myself persuaded by, or at least in agreement with) the reasoning leading to those conclusions.
Frankly, I am not (yet) persuaded that Art. 84 EPC is a relevant source of principles for the INTERPRETATION of the claims of a pending application or granted patent … let alone the SOLE relevant source, which seems to me to what you are arguing. However, I am certainly open to persuasion if you can explain why that provision (when interpreted according to VCLT methods) clearly and unambiguously supports your position.
@ Doubting Thomas,
As far as our discussions on Art 84, support, are concerned, the discussions were certainly endless as you could never stop arguing and always came back, trying to convince me of the righteousness of your position. In this respect, they were not useless, as at least we know that we disagree.
I read your last comment with great interest. I am not sure, but you seem to come from a country of common law. If this is the case, it is somehow surprising for you to state that any case law (no matter how well established) has reached precisely the correct interpretation.
When I rely on case law of the boards, I have as well independently assessed (and found myself persuaded by, or at least in agreement with) the reasoning leading to those conclusions in the case law.
I can however agree on one point with you, the EPC ought to be interpreted according to the VCLT. It is very rare that individual boards refer to Art 31 or 32 VCLT. This is much more frequent for the EBA.
I would not be surprised if in G 1/24, the EBA will refer to the VCLT, and especially to Art 32, when considering the “Travaux préparatoires”. As far as Art 69 EPC is concerned, they are very interesting, as they allow to find the source of said Article as well as the reasons for the Protocol on Interpretation.
You must have misread me as I have never claimed that Art 84 EPC is a relevant source of principles for the interpretation of the claims of a pending application or granted patent. This role is clearly that of Art 69 EPC and its protocol on interpretation. It is at best an ancillary reason.
In my opinion, Art 84, support, can for instance come into play when a feature in the description is considered optional, whereas it has been included in an independent claim. In later proceedings, it is than possible for the patentee to claim that the description allows a much broader interpretation as he feature, might well be in the independent claim, but the description allows not to consider that this feature as limiting as it is only optional in the description. This is an example where Art 84 and Art 69 come close to each other.
Mr Thomas,
Thank you for your considered reply. It is appreciated.
It seems that I indeed misunderstood your reasons for referring to Art. 84 EPC. However, I believe that it is easy to understand why I did that, given that the sole topic of discussion was the legal basis for the EPO’s practice on claim interpretation.
I can certainly understand why you might think that Art. 84 can come into play in certain circumstances. However, what I am looking for is the FUNDAMENTAL legal basis for the EPO’s approach, ie the basis under ALL circumstances. Can we at least agree that Art. 69 EPC and its Protocol are the only provisions that we should look to in this respect?
I am glad to hear that you have independently assessed the case law with which you agree. This is because it should mean that you are able to explain to me how the principles that you cite (and that you believe support the EPO’s claim interpretation practice) derive clearly and unambiguously from the relevant provisions of the EPC. I await with interest!