EP 2 960 746 B1 relates to a control system and method for controlling the movement of an aerial apparatus, i.e. an aerial firefighting ladder controlled by a joystick.
Brief outline of the case
The patent was revoked due to lack of N of most of the requests over a public prior use, i.e. a real firefighting ladder inspected by the OD, and some supporting documents as well as a witness hearing. Two AR were not admitted by the OD.
The board confirmed the revocation.
The case is interesting in that the board gave a very clear interpretation of G 1/24.
The proprietor’s point of view
According to the proprietor, “consulting” the description and the drawings means that the definitions of a claim feature provided in the description, and the drawings, should be read into a claim.
The proprietor argued that the present board deviated from the interpretation of the EPC contained in G 1/24 within the meaning of Art 21 RPBA by not considering the description and the drawings of the opposed patent when interpreting the claims of the patent. It did, however, not submit any specific question to be referred to the EBA.
The board’s decision
With respect of the manner in which G 1/24 should be applied, the board stated the following:
- First, the wording of the claims forms the “basis” for their interpretation and, for the purpose of interpreting the claims, the description and the drawings should always be “consulted” or “referred to”. G 1/24 is, however, silent as to the very purpose of such “consultation” or “reference”.
- In particular, it cannot be inferred from G 1/24 whether the description and the drawings should be “consulted” for the purpose of, for example, deriving “explanatory aids” to claim interpretation, see e.g. UPC_CoA_335/2023, second headnote, confirming the ordinary meaning of a claim feature, determining the function or the purpose of a claim feature, or simply defining the technically skilled reader of a claim see e.g. T 1924/20, Reasons 2.7, etc.
- Second, discrepancies in claim interpretation practice between national courts, the UPC and the BA are undesirable and should thus be avoided.
- Third, it is up to a patentee to remedy discrepancies between the description and the claims. In other words, patentees are the masters of their fate.
In reply to the proprietor’s point of view, that G 1/24 was to be understood such that a feature of the claim must be interpreted in a more limited manner based on features set out in the embodiments of the invention as disclosed in the description, the board found no authority for interpreting a claim more narrowly than the wording of the claim as understood by the skilled person.
First, because “consulting the description” does not imply any specific result of such consultation.
A consultation of two conflicting authorities does not a priori determine who is master. G 1/24 does not, as the proprietor seems to suggest, require the boards to give the description preference over the wording of the claim. To the contrary, according to the Order of G 1/24, “the claims are the starting point and the basis for assessing the patentability of an invention”, and the present board added that, in line with UPC_CoA_335/2023, second headnote, presently not available, the claims are the “decisive basis”.
Second, such interpretation would contradict the well-established jurisprudence of the BA, which was essentially confirmed in decision G 1/24, Reasons 10, see e.g. also T 1999/23, Reasons 5.6.
Third, such an interpretation would directly contradict the second takeaway from decision G 1/24, namely a harmonised claim interpretation between national courts or the UPC and the BA. For a long time, it has been considered unsatisfactory that patentees could get away with different claim interpretations for validity, on the one hand, and for infringement on the other.
The board quoted Sir Robin Jacob in decision UK Court of Appeal, European Central Bank v DSS [2008] EWCA Civ 192 at n 81, in which “Professor Franzosi likens a patentee to an Angora cat…”.
- For the board, the problem Professor Franzosi described would become relevant if the board were to interpret a claim below the wording of the claim as understood by the skilled person skilled in order to find it patentable, while an infringement court would interpret the claim literally when determining infringement.
The board also noted some further judicial precedents:
UPC-CD Paris-30.04.2025-UPC_CFI_230/2024, first headnote, temporary not available
- “a broad, general term used in the main claim is not to be limited to an understanding derived from the more specific or narrower features disclosed in a dependant claim or in the description.”
LD-Hamburg-30.04.2025- UPC_CFI_278/2023 (Agfa/Gucci)
- a claim feature was interpreted in a restricted manner on the basis of an explicit definition set out in the description.
German Federal Court of Justice-07.09.2024- X ZR 255/01– Bodenseitige Vereinzelungseinrichtung-
- “An example embodiment does not as a general rule permit a restrictive interpretation of a patent claim that specifies the invention in general”
Given the above precedents, the board concluded that, in order to do justice to the second takeaway from G 1/24 and align the judicial practice of the BA with that of the national courts and the UPC, a claim should not be interpreted, based on features set out in embodiments of an invention, as having a meaning narrower than the wording of the claim as understood by the skilled person skilled.
Only as an aside, the board notes that the above findings also correspond to court practice outside Europe, e.g. in the US and in Japan.
The board has “consulted” and “referred to” the present description and drawings to define the technically skilled reader from whose perspective or view point a claim is to be interpreted.
After careful analysis of the features at stake, the board confirmed the lack of N of claim 1 as granted in view of the PPU.
In its catchword, the board specified that
- In cases of discrepancy between the claim language and the description, it falls upon the patentee to remedy this incongruence by amending the claim. It is not the task of the BA to reach such alignment by way of interpretative somersaults.
Needless to say that the board never considered a referral to the EBA.
Comments
The present interpretation of G 1/24 makes it very clear that the boards will apply it in a way which will not suit most applicants/representatives. To me, the notion that the patent is its own dictionary is dead.
The catchword is very clear in this respect. Any incongruency, not just inconsistency, has to be removed by claim amendment.
If the applicant/proprietor wants to give a claimed feature, clear as such for the skilled person, a more limited or a broader interpretation, it is up to the applicant/proprietor to amend its claim in order to give the claim the interpretation it wishes. The interpretation cannot be hidden somewhere in the description.
To sum it up, interpretative somersaults are not to the liking of the boards.
As the present decision has been taken by an enlarged composition ot three TQM and two LQM, as well as distributed to all chairpersons and members of the OD, it bears even more weight.
In view of the way boards interpret G 1/24, it can be guessed how the Guidelines might be amended.
If the differing interpretation from the description is incorporated in the claims, alignment between claims might become quasi automatic. It could well be that only embodiments not falling under the claims will have to be marked as such.
Comments
2 replies on “T 2027/23-A further interpretation of G 1/24-No interpretative somersaults for the boards”
T2027/23 was discussed todau on the IPKAT blog. There, the blog author, Dr Rose Hughes, stated:
‘By stating that patentees themselves must fix inconsistencies, and that the Boards of Appeal will not perform “interpretative somersaults” to do it for them, T 2027/23 might be seen to indirectly support the case for requiring such amendments to ensure legal certainty. On the other hand, making it up to the patentee to align the description and the claims could be read as supporting the case that mandatory description amendments should not be forced on patentees, given that legal certainty is provided by an established approach to claim interpretation that focuses on the primacy of the claims and does not allow inconsistencies in the description to override the claim language. If this is how claims are to be interpreted, what need is there to amend the description? ‘
I thought this summarized the issue quite well, that’s why I copied it.
I support the second of these two interpretations, whereas you appear to be in the first camp.
On the issue of the patent being its own dictionary, I still do not agree with you. There are at least two cases in which the patent can be its own dicstionary:
1) If a certain term is defined differently in the description than the common understanding, it follows from T2027/23 that the applicant/proprietor should amend the claims. If it is a limitation, usually the applicant/proprietor can do this, and in such a case the patent IS, at least before the amendment, its own dictionary.
2) Also, T2027/23 deals, like any T decision, with a specific case. T2027/23 did not concern an explicit definition, in which the description says ‘in this document, feature A is defined as ….’
In such a case with an explicit definition, the applicant should have been forced to place this definition in the claims before grant, but if, somehow, this was missed, I find it hard to believe that that an OD or BoA would then ignore such an explicit statement and consider that an interpretative somersault, instead of a straightforward interpretative act. So, also in the case of an explicit definition in the description, I still believe, notwithstanding T2027/23, that the patent can well be its own dictionary.
I agree that the patent will not very easily be taken to be its own dictionary, but it is definitely not excluded either.
Dear BJ,
Thanks for your comments and drawing my attention to the IPKat dealing with T2027/23.
I have great respect for Dr Hughes opinion, but like your comment I consider it similar to the glass being half full for some, and half empty for others.
I do agree that “T 2027/23 might be seen to indirectly support the case for requiring such amendments to ensure legal certainty”. I would go one step further: T 2027/23 directly and not indirectly, supports the case for requiring such amendments to ensure legal certainty.
It is your good right to disagree with me on the issue of the patent being its own dictionary. I still beg to differ.
What good is it to decide that the patent is its own dictionary if the so-called notion of a dictionary disappears when the claim is amended in order remove the incongruence between the claims and the description? A patent could only be its own dictionary if the dictionary definition stays in the patent, or have you seen definitions in a dictonay vanish?
When an intermediate generalisation is corrected by adding the missing features present in the description, which allow to overcome the objection of added matter, would you consider the patent being its own dictionary? I do not, as it boils down to re-establish what has been originally disclosed.
I can agree with you that T2027/23, like any T decision, deals with a specific case. T2027/23 and did not concern an explicit definition. If a different meaning is given in the description with respect to that of the skilled person reading the claimed feature, the applicant/proprietor will not herald t so bluntly.
I agree with you that in the case of an explicit definition, the applicant should have been forced to place this definition in the claims before grant. If, somehow, this was missed, it is correct in my view that an OD or BoA will then ignore such an explicit statement and consider that an interpretative somersault, and not accept the difference as a straightforward interpretative act.
Until the interpretation of G 1/24 will have diffused in applications, we will often be confronted with such difference of interpretation between claims and description. The lesson to be taken from board decisions following G 1/24, is that the applicants/proprietors cannot bank on the fact that a different interpretation of claimed features in the description will be accepted. The board made clear in T 2073/23 that patentees are the masters of their fate.
After all, in T2027/23, the board has purportedly included a reference to the famous Angora cat. It should not be permitted to the proprietor to have one interpretation in case of validity and one in case of infringement.