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The patent was revoked due to lack of N of most of the requests over a public prior use, i.e. a real firefighting ladder inspected by the OD, and some supporting documents as well as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
39 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.
The implementation of G 1/24 in T 2027/23 is welcome. The Board’s statement that « 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 » is fully aligned with the settled case law of the BOAs, i.e. the rule of the broadest reasonable interpretation.
The same principle is stated in UPC decisions, such as CD Paris [230/2024] Kinexon v. Ballinno cited by Mr Thomas, dealing with a revocation request. The decision is actually available on the UPC website, it was published on 21 May 2025. Generally speaking, the primacy of the claims is the leading principle in the case law of the UPC. See also the recent decision of LD Paris [363/2024] dealing only with equivalents.
A clear conclusion can be drawn from T 202723 : if the applicant or patent owner wishes to rely on a narrow interpretation based on information in the description or in dependent claims, in order to distinguish over the prior art, it is up to them to amend the independent claims accordingly.
T 697/22, the referring decision to G 1/25, provides in Reason 15.1.2 a potent policy argument supporting what it calls the « second line of case law « finding there is no basis in the EPC for the requirement to adapt the description to the amended claims. The Board reasons that the decisions under the second line of case law share the underlying idea that the inconsistent description and the possible consequences are the applicant’s responsibility.
This « underlying idea » is implemented at the 71(3) stage in GL C-V 1.1 which states that the text the ED intends to use for the grant « may include amendments and corrections that the examining division made on its own initiative and can reasonably expect the applicant to accept ». If in doubt as to the applicant’s agreement, the ED should contact them, and the applicant’s agreement should be recorded.
The applicant’s responsibility also implies that the EPO has no responsibility, hence no liability, even if a patent is revoked or held invalid as a result of its own action, e.g. if an amendment entered by the ED at the 71(3) stage is in violation of Art 123(2).
The « underlying idea » emphasised by T 797/22 can justify the applicant’s disagreement with description amendments which delete or disclaim embodiments no longer covered by the amended claims. Nonetheless, it is not applicable to all kinds of inconsistencies and all stages of examination. If an inconsistency casts doubt as to the meaning of a claim term (see 2024 version of GL F-IV 4.3, in which « casts doubt » in the present tense has replaced the conditional « would cast doubt » of the 2021 version), this violates the clarity condition of Art 84 and would warrant a refusal if it is not addressed by the applicant.
In respect of the « patent being its own dictionary », I agree that this is acceptable but subject to restrictive conditions. First, the « underlying idea » of applicant’s responsibility implies the applicant’s discretion as to the drafting of the original application. The applicant must be free to include definitions in the description which depart from the ordinary meaning of claim terms, much like a list of definitions in an agreement. But the definitions should be worded so as to express the applicant’s clear intent that the claim terms be interpreted in accordance with the definitions of the description, and be consistent with the description as a whole. On this topic, see Rose Hughes’ post of 10 June 2025 on IPKat and her comments on the CAFC decision Alnylam v. Moderna dated 4 June 2025 setting out the restrictive conditions for a patent to be its own « lexicographer ».
Mr Hagel,
I read your comment with great interest.
I would however like to object that it is not only if the applicant/proprietor wishes to rely on a narrow interpretation based on information in the description or in dependent claims, but also in case the applicant/proprietor wishes a broader interpretation based on information in the description, that the respective information should be brought into the independent claim and not merely hidden somewhere in the description.
The primacy of the claims means simply that an applicant/proprietor cannot come up with one interpretation of claimed feature when it comes to validity and with another one when it comes to infringement based on the description or vice versa. If this is the case, then, there is a discrepancy or an incongruency between claims and description.
That it is the responsibility of the applicant to draft its specification and its claims as he thinks fit is not at stake here. The own responsibility of the applicant/proprietor does not exonerate the EPO to check that a granted patent has to abide by the EPC. Once the applicant has approved the text following the R 71(3) communication, any oversight on the side of the EPO cannot allow the applicant to withdraw from its own responsibility.
In view of the above considerations, I do not see in Reason 15.1.2 of T 697/22 “a potent policy argument supporting what it calls the « second line of case law « finding there is no basis in the EPC for the requirement to adapt the description to the amended claims”.
The contrary is true as the number of decisions holding that the description does not have to be adapted represent a very small minority of decisions, compared to all those holding the adaptation of the decision as necessary. Even the referring board in T 697/22, is of the opinion that the description has to be adapted to the claims. It is only in view of T 56/21 and the like, that it considered necessary to seek clarification of the issue by the EBA.
You have made abundantly clear that you are not in favour of the adaptation of the description. However, I cannot follow your view, as it ignores what the EPC requires and at the same time ignores the primacy of the claims.
With G 1/24 and the decisions which have followed, it is clear that, if the primacy of the claims should be given any meaning, then the applicant/proprietor cannot leave in the description statements which are at odds with what the claim says. If this is the case, there is a manifest inconsistency, or incongruency to use the wording of T 2027/23, and the latest version of the GL F-IV 4.3 apply in full, as it is undeniable that the statement in the description indeed casts doubts on the scope of the claims.
For instance, this is already the case when a feature from a dependent claim is added to an independent claim in order to limit it. The corresponding feature cannot be left as optional in the description. The own responsibility of the applicant/proprietor cannot be taken as an excuse to leave such a manifest inconsistency in the description.
The notion of the patent being its own dictionary is clearly at the opposite of the concept of primacy of the claims. What good is it, if beside the claim wording, third parties have to dig deep in the description to know what they can be faced with?.
The notion of the patent being its own dictionary is a creation of the German Federal Court which has the deserved nickname of “patent repair shop”. When searching the keyword “own dictionary” in decisions of the boards, the result gives a single decision, T 1271/05, in which this notion was denied by the board.
I fail to see in ”Rose Hughes’ post of 10 June 2025 on IPKat and her comments on the CAFC decision Alnylam v. Moderna dated 4 June 2025 setting out the restrictive conditions for a patent to be its own « lexicographer »”.
On the contrary, Rose Hughes made clear that “If a patentee wishes to narrow or broaden the scope of their invention to something different, the best and safest place to do this is the claims, and not via the back-door of description definitions”.
The comment was made before the issuance of G 1/24, and she took great care to draw the attention of the specificities of US law. In the case discussed before the CAFC (Alnylam v. Moderna), the proprietor gave in the description a more limited interpretation of the feature in the claim. The notion of the patent being its own dictionary is no good, it backfired on the proprietor. It is right that it never got a foothold at the EPO.
Daniel, with the comment that follows, I will try to address an issue (primacy of what) which (I suspect) troubles various commentators. I like to think that the following example is a bit like the “infringement and Validity” examination paper that student patent attorneys in the UK must sit, write and pass before they can go on the Register of Patent Attorneys. The Guidance Notes to candidates emphasize that there is no right or wrong answer. Rather, it is the quality of one’s reasoning in one’s written answer that determines whether one passes or fails the Examination Paper.
Suppose a claim, clear in itself, present as claim 1 in the A publication, gets through, unamended, to B publication supported by a description which includes a definition of a term (say: gathered) in the claim that defines the term in the claim wider than the ordinarily understood meaning of the term in the claim. Say, for example, gathered is defined to include “rolled up”. But the illustrated embodiments in the B publication are all of pleated realisations.
Suppose the ED, despite its best efforts to police Art 84 EPC exhaustively, has not noticed that definition within the text of the B publication. Examiners are only human. Despite their best efforts, they don’t see everything. Opponents have much more time than EPO Examiners to read through every sentence of every description.
Now suppose that the claim, clear in itself, gets opposed at the EPO. How shall the OD and the TBA give the clear granted claim “primacy”? Suppose the prior art relied upon by the Opponent includes examples of “rolled up” realisations of the subject matter claimed. How shall the OD, and then the TBA, give the claim “primacy”? Shall it find the “gathered” claim old and obvious, or should it maintain it as new and inventive?
Dear Max Drei,
To summarise your point: claim 1 as granted contains the feature “gathered”, and the description includes adifferent definition “rolled up”. All embodiments disclosed in the B publication are all of “pleated” realisations. The prior art relied upon by the opponent includes examples of “rolled up” realisations of the subject matter claimed.
If the embodiments “pleated” were not contained in the A publication we would have a clear-cut case of added matter. I do however not think that you aimed at this situation.
As the proprietor, in spite of only disclosing “pleated” embodiments for what he considers falling under “gathered”, has included in the description an indication that “rolled” up also falls under the definition of “gathered”, then I would be inclined to consider that the proprietor wanted to obtain a scope of protection different than that only available with “gathered”=”pleated”.
There is a manifest discrepancy between the claims using “gathered”, which according to the examples means “pleated”, and the description which allows a different interpretation “rolled up”. Then the proprietor will be faced by an objection of ack of novelty or inventive step due to the fact that he also wanted to have protection for “rolled up”.
Primacy of the claims does not mean that the claims are looked at on their own. If the description attempts to give a limited interpretation, it will be ignored. If the description attempts to give a broader definition, it will have to be taken into account.
Whatever the discrepancy might be, the applicant/proprietor should not profit from it. There cannot be a different interpretation when it comes to validity and/or infringement.
With a description mentioning “rolled up”, the proprietor could well attack for infringement a third party selling devices in which the same thing is “rolled up”, even if its claims only mentions “gathered” and the examples are “pleated”.
Conversely faced with prior art disclosing the same thing which is “rolled up, he could claim that he has only claimed “gathered”=”pleated”, and hence a prior art with the same thing being “rolled up” cannot be held against its claims which says “gathered”.
In other words, you cannot have your cake and eat it.
I think my position is a fair compromise. It respects G 1/24, the description has been consulted, but it is not for the OD or a TBA to make somersaults when trying to interpret the claim.
G 1/24 has not said that only the claims have to be considered or that any definition in the description supersedes the definition in the claim. It all depends, whether the definition in the description and in the claim are different, i.e. broader or more limited. The applicant/proprietor cannot benefit from a discrepancy between claims and description and/or interpret the claim as he thinks fit, or at his discretion.
Well, yes, Daniel, I see all that, thanks. Obviously, a way must be found to stop a patent owner having their cake and eating it too. Imagine: you have to write the decision of the OD or the TBA, in the above hypothetical. What will you write? Will it be that gathered includes rolled up so the claim is invalid? Or will it be gathered means gathered, which does not include rolled up, whereby the opposition fails? Remember, there is no right or wrong answer. Points are awarded only for the quality of the reasoning. And what does “primacy of the claim” mean in these circumstances? I hope I am not annoying you as much as Pudding does.
Dear Thomas,
Thank you for your excellent write-up of T 2027/23.
While I agree with you on most points, on the point of the patent being its own dictionary I still have to disagree with you while agreeing with BJ. Although, I consider that we have reached an consensus to the point where the disagreement in mainly on choice of words rather than on what “the patent can/cant be its own dictionary” actually means.
You bring up the point of “A patent could only be its own dictionary if the dictionary definition stays in the patent, or have you seen definitions in a dictionary vanish?” to which I would like to reply: As you are well aware in the days of printed dictionaries definitions and/or terms constantly “vanished” once a certain term fades common use in its language. Similarly, definitions of terms regularly change over time once science progresses and better descriptions are available.
To be more clear, you have so far not been able to convince me that a patent can be its own dictionary for terms that have no commonly accepted and clear definition for the skilled person.
As a practical example, let’s consider a claim directed to a technology platform for increasing efficacy of proteins. Let’s consider the claim is directed to a protein covalently conjugated to a specific signal molecule moiety providing for an inventive effect. Now, let us further consider that a competitor wants to sell an enfuvirtide (HIV medication comprising 36 amino acids) conjugate comprising a moiety falling under the signal moiety as claimed.
To determine whether the competitor falls under the scope of the claim the skilled person first has to determine whether enfuvirtide is a protein. While everybody knows – in principle – what a “protein” is, this term has no clear-cut limits regarding size length or the presence of glycosylation. It appears that there is a technical consensus that a peptide with more than 20-50 amino acids is called a “protein”, while anything below that is referred to as “peptide” or “polypeptide” (further problems relating to whether a “protein” can be glycosylated will be omitted for simplicity). Therefore, it is not unambiguously clear from the common technical understanding of the skilled person whether enfuvirtide is still considered a peptide or falls under the term “protein”, i.e. whether the competitor would fall under the scope of the claim or not (disregarding for now the doctrine of equivalent infringement).
In cases such as this, which are more common in the fields of chemistry and biochemistry as one would expect, it can be vital if an applicant has used the description to supply the skilled person consulting it with an explanatory aid that provides clear-cut borders, e.g. a “protein” as referred to herein is a polypeptide compound comprising more than 50 amino acid units”. If present, such a definitions provides clarity to the public as to the actual scope of the claim. In such a case, the patent can be its own dictionary.
To underscore my point, I point to the much-discussed Agfa/Gucci case, also cited in T 2027/23. To the best of my knowledge, there was no commonly accepted and clear definition for the disputed term “achromatic” base coat. While the proprietor tried to argue for infringement of an “ivory” base coat based on a cobbled together technical definition of the term “white” as “achromatic”, the board – correctly – cut through the proprietors nonsense and bound the proprietor to a definition of “achromatic” the proprietor himself provided in the application as originally filed. Therein, the CFI used the patent as its own dictionary for a term without a clear and common understanding in the art and denied infringement, but at the same time had to uphold patent validity (as clear borders between “ivory” prior art and the “achromatic” claimed matter had been established).
In my mind, would the CFI have disregarded the patent as its own dictionary for a term with no clear-cut technical borders or understanding in the art, it would have acted contrary to legal certainty for the public, as it was not clear from the claim wording alone where the borders of “achromatic” had to be drawn. As every claim requires interpretation and the description has to be consulted with interpreting, the public is not faced with an additional burden in considering definitions within the patent. It is another matter whether such a definition should have been included within the term from the onset or at the latest prior to grant. In my personal opinion, including every definition for every “blurred” technical term leads to bloated and incomprehensible claims in many technical fields. I find their inclusion as “explanatory aids” in the description much more suited in yielding clear and concise claims.
Where we all appear to agree is that a patent cannot be its own dictionary for terms that do have a commonly understood technical meaning or for implying a limitation to terms used in a claim based on the context within the application or the problem to be solved. Any one of T 1561/23, T 2027/23, T 1069/23, T 1465/23, T 1846/23, T 400/23, T 1164/23 and T 1999/23 released after G 1/24 made that clear.
Lastly, I remain undecided on the position whether “unfit” definitions which either try to define terms with their own clear-cut and established technical meaning, or worse, try to limit or broaden technical terms in the definition creating “Angora cats”, should be removed from the patent or not.
On the one hand, the primacy of the claims has clearly been confirmed. It is the position of the vast majority of patent offices around the world, that the public is more than capable of determining whether a part of a patent can be ignored in construing a claim or not.
On the other hand, I do tend to agree with Thomas that in order to increase legal certainty and avoid any potential mistakes in infringement courts the patent should be adapted to the claimed matter. However, I feel that when one accepts that is the explicit goal of the EPO to avoid any possible mistakes and/or confusion in construing granted and claimed matter, the current practice of including a “Further disclosed herein is” feels like a sorry bandaid. If taking this position and being consequent I feel that any matter described in the description that does not fall within the scope of the claim or serves to explain such matter should – like any definition conflicting with the skilled persons understanding of a term – be excised from the granted patent.
Personally, I have had to analyze 1000+ page patents wherein a good 800-900 pages referred to irrelevant and/or only adjacent matter. I feel conflicted with calling such patent descriptions “clear and concise” even though the granted and claimed matter is linguistically correctly marked. Infringement courts should be more than capable of establishing equivalent infringement by referring to the application as filed and their common sense. As such, I am still torn whether to adopt the world-wide practice of leaving a granted patent as-is, or whether to subject any granted patent to the “red pencil” of cutting it down to the granted scope. What I can say is that the current EPO practice of merely linguistically excising non-claimed matter does – in my opinion – fails to achieve what it sets out to do. I do see, though, that the second option of forcing excision of non-claimed matter will have both patentees and the representatives up in arms.
I look forward to hearing your further opinion on the matter.
Best regards, L.T.
Dear L.T.,
Thanks for your comments. They gave me food for thoughts.
For a start, I am well aware in the days of printed dictionaries definitions and/or terms constantly “vanished” once a certain term fades common use in its language. Similarly, definitions of terms regularly change over time once science progresses and better descriptions are available.
What you say here, reinforces my position that the patent should not be its own dictionary. The patent is meant to last up to 20 years, and if the dictionary definition changes during this time, this will detrimental to third parties, which might be confronted with a new interpretation.
When a product is only defined by a trade mark, its composition is normally not known. There is a long line of case law saying that such a claim is not allowable as the composition might change. In how far this will change with G 1/23 remains to be seen.
I can understand your worries when it comes to biotechnology. This domain should however not benefit from a preferential treatment.
The EPC does not make any difference among technical domains.
To me the limit is the following: any statement in the description should not allow the proprietor to come up with one interpretation when it comes to validity and another one when it comes to infringement.
To take your example, what would hinder the applicant/proprietor to bring in the claim the statement that “a “protein” is a polypeptide compound comprising more than 50 amino acid units”? Then the situation would be clear for everybody.
In the famous Agfa/Gucci case, the UPC CFI-LD Hamburg has indeed used the formulation that a patent may be used as its “own lexicon”, and referred to a decision of the LD-Munich. In this respect, I would like to observe that in both cases, the leading judge and the second judge on the panel were German nationals. It cannot be excluded that those judges still think in terms of national procedures. We should not forget that the notion of the patent being its own dictionary has been created by the German Federal Court. The boards of the appeal are not obliged to follow this track, and in view of the decisions following G 1/24, they will not do so anyway.
When Agfa replied to the search opinion, it limited claim 1 by deleting “chromatic” in it, but did not do the same for claim 10! This shows that the ED did not even bother to check whether the deletion of chromatic was not only complete in the claims, but also in the description, as it was the clear intention of Agfa to limit its claim to “achromatic”. On page 23 of the decision, the LD-Hamburg noted: “There are several passages mentioning “chromatic” in the specification of the patent that should have been deleted:….It is immediately apparent that the specification is not consistent with the granted claims”.
There is no doubt for me that, once claims are amended, the description has to be adapted so that no discrepancy between claims and description may occur. The fact that in the Agfa/Gucci case, “chromatic” was not excised from the description, allowed Agfa to claim infringement for “chromatic” as well, although it was not any longer covered by the claims. This is exactly what should not happen: allow the applicant/proprietor to come up with one interpretation when it comes to validity, and a different one when it comes to infringement.
If original embodiments do not any longer fall under the claims, the corresponding embodiments do not, in my opinion have to be excised, but marked accordingly. Otherwise the proprietor might still use those examples to claim a different scope of protection from that resulting from a fair interpretation of the claims.
The claims have to be clear and concise, but the same is not required from the description. For an ED it is difficult to decide what is unnecessary ballast, and it is only manifestly irrelevant to the invention underlying the application/patent, that it should be deleted. To me claim-like clauses are unnecessary ballast.
The day Art 84, will be amended, then it will be possible, like in the USA, to leave the description as originally filed. However this should go on par with the introduction in European practice of the notion of file-wrapper estoppel.
Whether or not both patentees and their representatives will be up in arms is irrelevant. Excision might be too drastic, if some embodiments are not any longer covered by the claims, milder remedies are available, but any discrepancy between claims and description ought to be excised. What matters is that the EPC has to be applied.
I am not sure that I could convince you, but I have attempted to answer your worries.
L.T., you wrote ‘On the other hand, I do tend to agree with Thomas that in order to increase legal certainty and avoid any potential mistakes in infringement courts the patent should be adapted to the claimed matter. ‘
This is a noble principle, but I wonder whether it is neccessary. Are there really that many cases where the proprietor succeeded in getting a wider scope accepted than the plain (to the skilled person) meaning ? This is an honest question, because I don’t know of any (except the pemetrexed case of course).
And similarly, are there that many cases where the proprietor managed to get a narrower scope accepted in order to avoid N/IS objections?
I know that proprietors TRY to broaden or narrow the scope based on the description, but I see that the courts (and ODs/BoA) generally are clever enough not to let them succeed.
Further, you wrote: ‘I do see, though, that the second option of forcing excision of non-claimed matter will have both patentees and the representatives up in arms.’
‘ Up in arms’ is, in my case, a bit exaggerated. I am opposed to it, basically for reasons of a ridiculous cost/benefit ratio (ALL patents have to be conformed, just so that the risk of a judicial error for 1 in 10000 or 1 in 100000 is reduced), not for disingeneous Angora car reasons.
Also, I hate to state that an example is not according to the invention. Firstly, because an examiner in another country (eg US) might read it and attach a meaning to such a statement that it doesn’t have.
Secondly because it may not be my true opinion. It may well be that I accept certain claims because I realise that they are the best that the examiner will allow, but that doesn’t mean that I agree with the examiner, I have just given up fighting.
In other words: An applicant accepting a certain allowable claims set is often the result of practical/financial considerations, a business deal so to speak, whereas an applicant stating that something is not according to the invention is a fundamental matter touching on the fundamental freedom of the applicant to accept the outcome but nevertheless disagree with the position of the other side.
Does the EPO then need to humiliate the applicant by forcing them to state something that they honestly don’t agree to, when the claims already make abundantly clear to the whole world what the scope of protection is?
@ BJ,
Part of the questions you raised in your comment have found an answer in my reply to L.T.
That proprietors try to broaden or narrow the scope based on the description, is an acquired fact. That the courts, and ODs/BoA, generally are clever enough not to let them succeed is not an acceptable vision. It directly and unambiguously implies that a blind eye can be turned towards requirements enshrined in the EPC.
With the proper prior art brought forward by an opponent, courts and ODs/BoA, can certainly make out what is allowable or not. The number of grants being opposed is relatively low. The number of cases ending in litigation before a court, is, in view of the high costs involved, even lower, With this view, you could claim that examination is not necessary, or at least not for the applications/patents of your clients. But I am sure that you would like those of your competitors to be examined.
Whether you like it or not, the description should not contain, direct or indirect, statements allowing to give a different interpretation of the claims at the discretion of the applicant/proprietor.
For the EPO, the reasons why an applicant accepts a claim or not are irrelevant. The requirements of the EPC are there to be respected. Once the applicant has provided claims and a description which are in accordance with each other, a grant or maintenance in amended form can be envisaged.
Contrary to what you allege, the EPO does not humiliate applicants by forcing them to state something that they honestly don’t agree to. Whether they agree to it or not is as well irrelevant. The EPC is like it is, and the job of the EPO is to abide by it.
If you find the wording “Up in arms” a bit exaggerated, then your statement about the EPO “humiliating applicants” is more than a bit exaggerated.
Mr Thomas,
Please don’t assume dishonest motives behind my writings (eg by stating that I would like my clients’ patent applicants not examined, but I would like the competitors patent applicants examined). I may not always express myself as clearly as I would like, and I may disagree with you on certain things, but I can assure you that I consider unexamined patents and long-pending patent applications in general harmful to society, and that I want the same treatment for all applicants, whether they are my clients or not.
I don’t agree to your statement ‘That the courts, and ODs/BoA, generally are clever enough not to let them succeed is not an acceptable vision. It directly and unambiguously implies that a blind eye can be turned towards requirements enshrined in the EPC. ‘
Attempts at claim re-interpretations will always be made by proprietors, even if they don’t believe in these attempts themselves. No matter how strictly the EPC is applied, proprietors will always try, you can never get rid of that. The fact that in general proprietors don’t succeed (and didn’t succeed even before the time of the pemetrexed case) is sufficient, at least for me, to consider that, simply, there is no problem that needs fixing.
When you say ‘the description should not contain, direct or indirect, statements allowing to give a different interpretation of the claims at the discretion of the applicant/proprietor’, I agree with you, but in practice that is already the case, even without strict ‘conforming’ of the description. It just depends on what kinds of statement are considered to CREDIBLY, not hopelessly, allow a different interpretation of the claims. I suppose that what is credible and what is hopeless is a matter of opinion.
The fact that G1/25 now lies before the enlarged board makes it obvious that there is no super clear EPC requirement for strictly conforming the description to the claims, otherwise this would have been solved 15 or 20 or 30 years ago. Maybe ‘support’ from A84 will turn out to be the basis for such a requirement, I don’t know, but it is possible. In my opinion it is not, but I may be proven wrong.
Dear BJ,
I want first to reassure you. I was merely provocative as I wanted to elicit a reaction on your side. I fully agree with you that unexamined patents and long-pending patent applications are in general harmful to society. I would add that the same applies to successive divisional applications which are withdrawn shortly before a (in general negative) decision is to be taken.
TEVA was fined €462.6m for misuse of the EPO patent system by filing multiple divisional patent applications and then withdrawing some of them during opposition appeal proceedings, thereby presenting moving and illusory targets for competitors. This had the effect of delaying or avoiding potential invalidation of patent protection, thereby artificially extending the protection for the active ingredient, and delaying market entry for competitor products.
I can also agree with you that “claim re-interpretations will always be made by proprietors, even if they don’t believe in these attempts themselves. No matter how strictly the EPC is applied, proprietors will always try, you can never get rid of that”. But this is no reason to encourage it.
Where I disagree with you, if when you conclude that “there is no problem that needs fixing”.
It is not question here to fix or not an apparently non-existing problem, it is simply the necessity to abide by the EPC. Whether it is Art 84, clarity, or Art 84, support is therefore irrelevant.
I also cannot agree with you that the adaptation of the description to the allowable claims is an issue that should have been solved 15, 20 or 30 years ago.
For the last 15, 20 or 30 years, there was a broad consensus among boards that the description ought to be adapted to the claims. It is most probably the famous “pemetrexed disodium” case which led to a strengthening of the Guidelines in this matter. Like often, the pendulum did not stop at the golden middle, but swung full pelt in the opposite direction.
It is only due to decisions like T 56/21 and the like, originating mainly from one LQM of the BA, that the referring board found it necessary to refer questions to the EBA, as the board in T 56/21 chickened out. As soon that there is a discrepancy between claims and description, it should be remedied. It is even the opinion of the referring board in T 0697/22.
I can therefore not agree with you that the “fact that G1/25 now lies before the enlarged board makes it obvious that there is no super clear EPC requirement for strictly conforming the description to the claims”.
Not only the famous Agfa/Gucci decision of the UPC-CFI LD Hamburg noted that some parts of the decision should have been deleted, this is also the case in a decision of the UPC-CFI LD Paris, UPC_CFI_363/2024, see the third sentence of Headnote 1.
Dear Max Drei,
I think I gave you my look on the matter. It all depends on what isdisclosed in the prior art.
In any case, the proprietor should not be allowed to have any discretion in how his claim ought to be interpreted.
You are not annoying me, on the contrary. It is always interesting to discuss the situation and the various possibilities, based on your decades long time as representative, myself with my decades of EPO work.
Being a representative in private practice, Pudding must not have too much work as he systematically replies quasi by return of post, and cannot stop replying. He absolutely wants to have the last word.
I feel actually sorry for him as one can physically feel his frustration, hacking away on his keyboard, pretending that he knows best….. .
Daniel, thanks for your reply but, sorry to say, it leaves me frustrated. Your answer to my question is: “it all depends on what is disclosed in the prior art” . But my question was about what meaning to give to the claim term “gathered”.
If the claim is clear and has “primacy” then we don’t need to look any further than the claim, to discover what “gathered” means. If the claim is not clear, insolubly ambiguous, then we can look into the description and with its help then bestow a meaning on the claim. But resorting to a consideration of the prior art to find out what the claim means strikes me as an “interesting” methodology, to say the least.
My guess is that your understanding of my question was not what I wanted to deliver to you. I guess you replied to a different question, namely, is the “gathered” claim invalid Y/N? Sorry, if I failed to write my question with sufficient clarity. What interests me is how to construe a claim, after grant, in EPO opposition proceedings, in cases where the ED failed in its task of enforcing strict conformity between description and claims. I think for that OD task it is not correct to do it by reference to the prior art. But by reference to the description? Yes or No? If it varies from case to case, what factors are decisive?
Now I know you don’t like hypotheticals, invented examples. Further, here, to reply would be to anticipate the line the TBA will follow in a real case, which is perhaps uncomfortable for you. Never mind. Sooner or later the Board will tell us what “gathered” means, in the context of the case within its view. And from that example we can see how to construe the granted claim in other opposition cases. I can wait patiently for that. And when we have that Decision on “gathered”, it will join pemetrexed as a useful case to discuss in blogs, conferences and so on.
As to Pudding, I suspect that, underneath it all, his question to you is much the same as mine.
Dear Max Drei,
I regret that you feel frustrated with my reply, but I acknowledge that my explanation was confusing. Please accept my apologies.
It is certain that clarity of a claim cannot be decided with respect of the prior art. This was also not what I meant.
When I spoke about the prior art, I was actually meaning the objection which can be raised in view of the prior art.
To clarify the matter I will repeat here my conclusions:
With a description mentioning “rolled up”, the proprietor could well attack for infringement a third party selling devices in which the same item is “rolled up”, even if the claim only mentions “gathered” and the examples are limited to “pleated”.
Conversely faced with prior art disclosing the same item which is “rolled up”, the proprietor could allege that he has only claimed “gathered”, and even the examples only disclose ”pleated” and this cannot be confused with “rolled up”. Hence a piece of prior art with the same item being “rolled up” cannot be held against its claims which says “gathered”, in spite of “rolled up” being mentioned in the description.
Such a different interpretation should not be allowed.
Primacy of the claims is a notion which has to be taken with caution.
In its etymological sense, it means that you look at the claim and only at the claim and you take the ordinary meaning for the skilled person of a claimed feature F and ignore what meaning can be given in the description of feature F. This is what G 1/24 does not want to see any longer.
For other people, like Pudding, it means that you take the claim as basis, but you have to take into account what meaning is given in the description to said feature F. This is however not what G 1/24 has said when it requires that the description has to be “consulted”.
In view of G 1/24 and the decisions which have interpreted and applied it, primacy of the claim means that they serve as a basis, but any discrepancy between claim and description which would induce “interpretative somersaults” is not acceptable.
This means in case of a limited interpretation in the description, this limited interpretation is to be ignored when assessing patentability under Art 52-57 as the claim is broader.
Conversely, it means that if feature F is given a broader interpretation in the description than in the claim, it is this interpretation which is taken into account when it comes to asses patentability under Art 52-57. In such a situation, a “broader” piece of prior art can be opposed to the claim which is more limited.
In order to avoid interpretative somersaults, the solution is manifest: bring into the claim the interpretation given in the description. Then the situation is clarified and by doing so, any discrepancy or incongruity between claim and description is obviated.
I hope that my position is now clear, and you don’t think any longer that I am of the opinion that clarity of a claim depends on the prior art.
“It depends” actually relates to the relation between the interpretation of a claimed feature F and the interpretation given of feature F in the description.
– When the latter is limiting, then the interpretation given in the description is ignored, and the prior art takes into account the broad interpretation in the claim.
– When the latter is broadening, the interpretation given in the description is taken into account, and broader prior art can be cited against a claim.
It sounds logical, or not?
Thanks, Daniel, for your answer of earlier today. Not convinced yet about its logic though.
Your logic can provide a nice response to an Angora cat (cake and eat it too) set-up. As I understand it, it is this: When the definition in the B publication of feature F in the granted claim conflicts with what F in the claim standing alone means to the skilled reader of the claim, then how the tribunal invokes or ignores the definition in the description against the patent owner will be one way for validity (claim given a wide meaning) but then the other way (narrow meaning) for infringement.
Normally, a claim should be given the same meaning, both for infringement and validity, right? But if the Applicant chooses to create an Angora Cat then the tribunal can feel free to copy that behaviour, and “play the patent owner at its own game”. Is that your thinking?
Who can complain about that? Being “hoist with your own petard” is an ancient way to serve the interests of natural justice. Any other way forward delivers to the Applicant an incentive to freight the B publication with Angora Cats, whereby their zealous litigators can argue broad or narrow depending on which of the two paths will deliver a better result against the opposing party in the litigation. As I understand it, in the USA (where drafters do what they are told by that higher form of life, the litigator) it is regarded as benchmark drafting competence to create an Angora Cat for as many as possible of the features in the claim Here in Europe, the courts really must apply themselves to create case law that punishes Applicants who deliberately seed their patent application with a slew of Angora Cats.
Not sure though that you can point to any case law, established or otherwise, which supports your line of logic. But perhaps in time it will emerge. Recall that the age-old maxim “what comes afterwards and infringes will, if coming before, destroy novelty”. This maxim was thought to be unassailable, carved in stone since the dawn of time, but is now dead and buried, much to the distress of many practitioners of my age and older. It took a long time of course, coming in only recently even though the Protocol to Art 69 EPC goes back to 1973.
If one maxim thought unassailable can be wiped away by the courts in less than 50 years, why not another, as you suggest. We could regard it as a “patch” to the problem that after grant claims cannot be revoked for failure to comply with Art 84, EPC.
Caveat Emptor is a great principle. Let it apply also to those patent applicants who deliberately abuse the system. The courts in the USA are already warning Applicants to be “careful what you ask for”. It could be that drafting practice is slowly changing over thee too. It all depends on what discipline the courts choose to impose.
Dear Max Drei,
I can agree with you that, in principle, interpretation of a claim should not be different when it comes to validity and/or infringement. However, post grant courts are free in their interpretation of claims. If an application is refused or a patent is revoked by the EPO, post grant courts have nothing left to decide. Post grant courts have only something to decide should a patent have been granted or maintained after opposition.
When post grant courts decide on validity and/or infringement, after grant or maintenance after opposition, they are not obliged to follow what the EPO has decided upon validity. There is no obligation for post grant courts to apply decisions of the EBA. The courts could well be lenient with proprietors as it is for example, the case of the German Federal Court, well know as patent repair shop. For instance, the BGH claims to follow the case law of the EBA in added matter, but do the contrary.
The EPO’s competence is limited to validity. My thinking is thus one step before a patent is granted or maintained and its aim is to avoid the creation of any Angora cat or the possibility for the proprietor to switch interpretation at will in post grant procedures.
This is exactly what was in the mind of the board in Reasons 3.5.4(c) of T 2027/23, when it mentioned the Angora cat: it should not be possible for the proprietor to give one interpretation when it comes to validity and one when it comes to infringement.
This means on the one hand that, a limiting interpretation in the description is ignored when deciding patentability under Art 52 to 57. This means on the other hand that, a broadening interpretation in the description has to be taken into account, when deciding patentability under Art 52 to 57.
To this effect, the conclusion of the board in T 2027/23 can be summarised as follows: if the applicant/proprietor wants the interpretation given in the description to have any effect, then it is his duty to bring this interpretation into the claim. It is not the job of the board, and I add that of first instance divisions, to make interpretative summersaults.
If applicants/proprietors abide by this ruling, this has the further advantage of aligning the independent claim with the description. Only if claims and description are aligned it can be avoided that the applicant/proprietor switches interpretations at its discretion.
You consider that I cannot point to any case law, but I beg to disagree. Two UPC decisions come to mind.
The first is the famous Agfa/Gucci decision (UPC_CFI_278/2023) in which the UPC CFI LD Hamburg has made clear that the Agfa could not extent the protection of the claim limited to “achromatic” to “chromatic” as left in the description before grant.
The second is the decision UPC_CFI_363/2024 of the UPC-CFI LD Paris in which it was held that, the protection did not extend beyond what was actually claimed, but still envisaged to fall under the protection when “consulting” the description.
What is interesting is that, in both decisions, the courts considered that features which were not in accordance with the claims as granted and would allow a broader interpretation should have been deleted before grant.
I cannot see why the maxim “what comes afterwards and infringes will, if coming before, destroy novelty” is out of date, the applicant/proprietor will simply not be allowed to switch interpretations at will.
This might indeed make life more difficult for US applicants when, from the outset, they try to build up potential Angora cats. They will also, but this is not new, have problems with added matter when every sentence in the description begins why “may”. If everything is optional, nothing is optional.
Daniel, I don’t know whether to laugh or cry. My best efforts to write to you clearly are foundering, every time. Of course I understand that, downstream of the EPO, infringement courts are not obliged to follow what the EPO says about claim construction. We don’t need to argue about that.
So I will start again and hope that, this time, I can make myself clearer. I continue to think of the “gathered” case as a useful example of the situation which troubles me (and also Pudding, I suspect). I admire the established case law of the EPO and want to see no decline in the estemmwith which it is regarded by patent judges all over the world.
To qualify as a UK patent attorney one must pass a written examination paper on the theme of i) claim construction ii) infringement and iii) validity of the claim in view. To pass, you have to convince the Examiners that you know how to construe a claim, how to deduce whether or not it is infringed, and how to deduce whether or not it is valid. If you give the claim one meaning in the infringement section of your written answer and then, later, in the validity section of your answer a different meaning, you are guaranteed to FAIL the examination.
Imagine that a court has to pass judgement on the “gathered” claim. What meaning will it bestow on the claim? Will it read the description and go on to find a “rolled up” accused embodiment to be within the meaning of the claim? Will it then find the claim invalid because “rolled up” is old?
Alternatively, might it ignore the definition in the description and go on, to hold that “gathered” in the claim has its natural meaning, whereby the accused embodiment does not infringe. And after that, when it looks at validity, will it use the definition in the B publication, to hold that the claim, correctly understood, is so wide that it lacks novelty. And all in the same written decision of the court. That really would teach the Angora Cat a painful lesson, wouldn’t it?
So far, you have avoided answering by reminding us that the EPO doesn’t do infringement so is free to give the claim whatever meaning it chooses, regardless of the consequences for infringement. But actions have consequences. And the EPO (and you yourself) do not shrink from proclaiming the duty it labours under, to help downstream courts by fiercely enforcing, prior to grant, the onerous provisions of Art 84 EPC. Likewise, claim construction at the EPO matters, to courts downstream of the EPO.
The TBA currently considering the “gathered” claim must decide what is the meaning of the claim term”gathered”. If it chooses the narrow meaning then presumably the claim is not invalid and can then be asserted, even against competitors using the rolled up technology (with the argument that it is an infringement by equivalent).
Alternatively, the infringement court can place on the claim a meaning different and wider than what the EPO TBA says is the meaning, paving the way for it to find the claim lacks validity. Perhaps the court will consider that it has no choice other than to read the B publication as a whole, including paying attention to the definition in the description.
As I see it, today’s problem is that everybody (courts, EPO) is trying their best to construe granted claims in the same way. When shall the EPO, and when shall the courts, after having “consulted” the description, choose to ignore a sentence in the description of the B publication that defines, clearly and unambiguously, a word located within claim 1 of the B publication?
So, if you were the TBA in the “gathered” case, mindful of the likelhood of litigation downstream of the opposition proceedings, how would you construe the claim, for the purposes of both validity and infringement, and why?
@MaxDrei (your comment of 7 September)
Taking together G 1/24 ‘s answer to question 2 requiring that the description be « consulted », without specifying the nature of such consultation, and its refusal to answer question 3 relating to whether a patent may be its own dictionary, my impression is that G 1/24 suggests a nuanced approach keeping away from a Yes or No answer and inviting a detailed case-by-case analysis to assess whether a definition of a claim term in the description may truly be equated to the definition of a dictionary and override the ordinary meaning of that term.
If so, it could be acknowledged that on the one hand, the applicant is free to set out an interpretation different from the ordinary meaning by a definitional statement in the description, but on the other hand, such definition should be binding on the applicant/patent owner.
When looking at the definition of « gathered » you refer to (i.e [0035] of the description of EP3076804), a case-by-case analysis would have to take into account the description as a whole and the specific wording of the definition.
As to the description as a whole, it is to be pointed out that the definition in ([0035] is not isolated. The description includes a set of definitions : see all paragraphs from [0029] to [0036], [0038], [0039] and [0041]. Within this set, some of the definitions refer to another definition. This is the case for the definition of « gathered » in ([0035], which refers to a « sheet », defined in ([0030].
Another issue to be assessed is whether the description as a whole is consistent with the definition of [0035], or on the contrary includes elements which would conflict with the definition.
As to the wording of the definitions, it clearly shows the applicant’s intent to have them considered as authoritative, definitional statements : each definition beginning with « as used herein », then placing the term between hyphens, then using the word « denotes », much like the definitions of terms in an agreement, which are binding on the parties and on the judge in case of a dispute between the parties over the interpretation of a definition.
This wording contrasts with that of ([0037] which uses the term « may be ».
In respect of ([0035], it is further to be noted that shortly after the publication of G 1/24, the patent owner has submitted an auxiliary request consisting of the deletion of ([0035]. The opponent has replied that the request was inadmissible under the RPBA and would be added matter as an intermediate generalisation. Oral proceedings are scheduled on 11 December.
Thank you, F Hagel, for writing such a detailed reply. Forgive me, I am at a loss what more to say.
But last night i replied at length to Daniel Thomas. Perhaps you would like to comment on what I wrote. i am curious what interested and knowledgeable observers think on this claim construction issue.
See my detailled reply. It speaks for itself.
Mr Hagel,
I can agree with you that it could be acknowledged that on the one hand, the applicant is free to set out an interpretation different from the ordinary meaning by a definitional statement in the description, but on the other hand, such definition should be binding on the applicant/patent owner. The problem is the following: which instance will insure the binding character of such a statement?
In echo to my last reply to Max Drei, the only way I see to render the statement binding, is to include the statement in the claim. This is the message one can get from boards decisions following G 1/24. Anything else brings confusion, inconsistencies or incongruities between claims and description.
In view of the above, I am not of the opinion that “G 1/24 suggests a nuanced approach keeping away from a Yes or No answer and inviting a detailed case-by-case analysis to assess whether a definition of a claim term in the description may truly be equated to the definition of a dictionary and override the ordinary meaning of that term”.
Every decision T or J decision is a case-by-case decision, and it can only be used again if the case in suit and the preceding case are similar. This does however require an explanation as to why decision is applicable in the instance in suit.
Placing terms between hyphens, then using the word « denotes », is not much like the definitions of terms in an agreement, which are binding on the parties. In the proceedings leading to the referral and during the OP in G 1/24, the opponent made clear that if one takes into account the definition “gathering” in the claim, whatever this might mean, the claim is novel over a certain piece of prior art, but lacks novelty if one takes into account the definitions given in the description. This is the core of the problem underlying G 1/24.
It is not a surprise that the proprietor filed an AR in which § [0035] is deleted. Independently of the admissibility of such a late filing, I am, like the opponent, not sure if such a deletion is at all acceptable under Art 123(2). By amending the description, the proprietor gives the skilled a new information after the deletion compared to before. I do not see there an intermediate generalisation, but a plain infringement of Art 123(2).
I would agree that neither the proprietor nor the opponent in G1/24 has covered itself in glory. As you say the definition of gathered in the description was unequivocal and deleting it adds new information which was not present prior to the deletion. That the amendment adds matter has nothing to do with intermediate generalizations and everything to do with basic common sense. By the same token the proprietor’s justification for why the amendment does not add matter leaves a lot to be desired. In any event it is likely the board will never even need to decide on Art. 123 because such a late request is plainly inadmissible. I personally find this a shame because any guidance on the interplay between G1/24 and Art. 123 would be most welcome.
@ Anonymous
I have nothing to add but to say that there is one decision dealing with Art 123(2) and in which the proprietor referred to G 1/24. It is T 1164/23.
In this decision, commented in my blog, the proprietor argued that, according to G 1/24, the subject-matter of the patent extends to what, after examination of the description and the drawings, appears to be the subject-matter for which the patent proprietor seeks protection, i.e. the will of the proprietor.
In Reasons 1.5.4, of T 1164/23, the board clearly dismissed this argumentation and reminded that, when it comes to added matter, G 2/10 is the decision to apply.
I agree with you that any guidance on the interplay between G1/24 and Art 123(2) would be most welcome. I am convinced that some decisions will come. I do however doubt that the whole case law under G 2/10 will be ditched and some milder requirements for added matter will be introduced in view of G 1/24.
Even if the board might not admit the request in which § [0035] is deleted as being late, it would be useful if the board could say something about the clear infringement of Art 123(2) added matter introduced by the deletion of saif §.
Max Drei,
In reply to you comment of 2025.09.10, you will find here my position:
I couldn’t give a damn whether you cry or laugh when reading my comments, but am getting annoyed.
You have been as clear as clear can be.
I also couldn’t give a damn what a candidate for becoming a UK patent attorney has to go through or not. That’s the least of my worries.
Furthermore, I refuse to put myself in the place of a board of appeal. That would be presumptuous of me. As you are retired, you can indulge inself in such an exercise, but this is nothing for me. I have too much respect for my former colleagues of the boards to follow you on this path.
If you follow the decisions of the boards after G 1/24, with the propensity to understand them, you must realise that what the boards are after, is simply to avoid a different claim interpretation in infringement and in validity.
This goal can best be achieved if the applicant/proprietor brings into the claim the different interpretation he is developing, not to say hiding, in the description. If the applicant/proprietor is reluctant to do so, he will have to bear the consequences.
If the applicant/proprietor tries to limit the interpretation of a claimed feature in giving in the description a limiting interpretation, this limited interpretation in the description will be ignored when assessing patentability of the broader interpretation of the claim under Art 52-57.
If the applicant/proprietor tries to broaden the interpretation of a claimed feature in the description, the limited interpretation of the claimed feature the applicant/proprietor wants to be adopted, will be ignored, and the patentability of the limited interpretation of the claim under Art 52-57 will be assessed with respect to the broader interpretation found in the description.
The duty of the EPO is to abide by the EPC and whether you find the way the EPO enforces, prior to grant, the provisions of Art 84 EPC, is actually irrelevant. I couldn’t give a damn whether you find it onerous or not, or whether it is done fiercely or not.
Art 84 is there to be enforced before grant or before maintenance in amended form, as Art 84 is not a ground of opposition or invalidity of a patent. The grant of a patent or the maintenance in amended form is a cut-off point in matters of Art 84, within the limits of G 3/14 in opposition. The job has to be done before and not after. It is unnecessary work after grant or maintenance to attempt to guess what could best be done to correctly interpret the claim in post grant procedures.
As I have explained many times, the best way to abide by Art 84 and to ensure that an applicant/proprietor cannot come up with a different interpretation in validity and in infringement, is for the applicant to bring in the claim what he has tried to hide in the description. This is the clear message given by the boards when it comes to apply G 1/24. This avoids any inconsistency or incongruity between claims and description.
If an applicant/proprietor wants a claim to be interpreted in a specific way, he has to bring the interpretation he wishes to see adopted into the claim. Anything else is besides the point and only generates confusion and would allow the applicant/proprietor to vary the interpretation of the claim at his discretion. This is by no means acceptable and the EPO is right to require this clarification.
Is this so difficult to understand? You might not be used to the fact that I express my views as strongly as I have done here, but enough is enough.
Daniel, I am sorry that I have upset you. I was only trying to mediate between your way of thinking and that of UK patent attorneys such as Pudding and me. But yes, I see that “enough is enough”. I should stop now.
What comes to my mind, however, when I read your successive postings is that hoary old joke about the French engineer, namely:
A practical engineer proposes a simple fix to a problem. The French engineer scoffs and says, “Yes, but does it work in theory?”
In theory, the EPC weeds out all non-conformity prior to grant. In reality, there will be many granted European patents that lack conformity. The practical problem is how, in real life, to adjudicate such patents. Yes, the patentee should not profit from deliberate acts of dissemblement but how shall the courts achieve that objective, in practice. I await for the EBA to tell us all. And I hope for a better answer than “It depends. It has to be decided case by case” because that answer is just a Green Light to US drafters, to continue drafting the US way, with deliberate ambiguity.
You might have chosen to stay anonymous but your are so easy to identify. You are Proof of the Pudding, alias the chap who complained to the Webmaster of my blog because you were dissatisfied with the way I summarised you amicus curiae in G 1/24. You are a representative in private practice with apparently lot of free time. Even being retired, I do not have the time to play ping pong.
You found that there is no reason for Max Drei to apologise. I am not prepared to accept this. I am fed up with people of your sort.
G 1/24 has clarified the situation, and the boards are clear in what they consider necessary: any inconsistency or incongruity between claims and description should be avoided. What could be done better in order to help post grant courts?
G 1/24 has not achieved what you had expected. This is your problem, not mine.
Daniel, I am puzzled. I guess that your post immediately above is a reply to one from Pudding that we readers do not see because you have censored it in its entirety.
Despite our differences, I hope to continue enjoying (and contributing to) your unique and hugely valuable blog.
Max Drei,
I couldn’t give a damn whether you are puzzled or not. I am not accepting to be treated as you did.
Furthermore, I refuse the use of the word censored. You continue with very strong wording. You apparently cannot help it. Could you think twice before coming with such an expression? You nearly escaped the full deletion of your comment.
When a comment is not published in a blog, there can be multiple reasons, and I do not think that censorship is at work. For instance, the comment might not bring the discussion forward, or the wording was inappropriate, could be two reasons for not publishing.
As far as Pudding’s comments is concerned, I made clear that I did not need him to join you in the insults you have proffered. I have deleted the rest, but I have kept the full text of the comment in my tablets.
The present blog is to my knowledge, the only one, or one of the few ones, which does not require prior approval before publication. I welcome this, but there are limits to what I am prepared to accept.
Attacks ad personam and citing names directly and unambiguously are two things I will not tolerate.
Max Drei,
I couldn’t give a damn whether you are sorry or not. You are not better than Pudding. You said that you should stop, but what you did is exactly the contrary. And on top of it you add insult to injury. But here you have crossed a red line.
What you call a joke about the French engineer is not a joke, it is an insult. I can’t help having been borne as a French person. You are not only insulting myself, but also my parents. Have you thought one second before writing such an insanity?
At least I kept my nationality and did not want to get another one for pure convenience. I could say a lot about the Brits, but I will not say anything, as it is never good to generalise and I have great respect for its civilisation.
I can agree that life is not perfect, and patents might still be granted with some inconsistencies. What is however important is to reduce this risk as much as possible.
This is what the boards have done: reduce the risk of inconsistencies by telling applicants and proprietors that, should they want a specific interpretation of claimed features hidden in the description, they are invited to bring it into the claim. What else should they do? The message is loud and clear for those who are in the capacity to understand.
It is not to the boards or to the EBA to tell post grant courts how to interpret claims. You are totally mistaken in this respect. And your waffling about the green light to US applicants is absolutely useless. I know too well how US applications are drafted and there are many ways to counter their attempts to be as imprecise as possible. The first way is R 43(2).
You are lucky that, in the present blog, there is no approval necessary for a contribution to be published as is common on other blogs.
This is however not a licence to insult people.
Dear MaxDrei,
Thanks for your appreciative comment.
I have insisted in my remarks on the applicant’s broad discretion in the drafting of the application, implying it is entitled to define claim terms in the description differently from their ordinary meaning in such a way that this provides public notice – to the skilled reader, to third parties, to offices and courts. I noted that this assumes highly restrictive conditions. If they are met, the definition of the description might override the ordinary meaning of the term and provide the interpretation relevant to the assessment of validity and of the extent of protection.
The counterpart has to be that the definition is binding on the applicant/patent owner and must apply even if this is at their detriment e.g. they may not drop the broader definition of the description and argue that the ordinary meaning must be considered in order to rescue the patent, or drop the narrower definition of the description in the assessment of the extent of protection as under Art 123(3) by the EPO or Art 69 by the courts.
Nonetheless, such a practice likely raises the issue of clarity, because the definition of a term in the description, since different from its ordinary meaning, may indeed « cause doubt » and make the term ambiguous. I think it is fully justified for an ED to require that the ambiguity be cured and I agree here with Mr Thomas that this should be done by entering such definition literally into the claims.
This solution fully meets international harmonisation concerns. See in the PCT ISPE Guidelines, appendix to Chapter 5, section A5.20[2] reading as follows :
« If the description gives the words in a claim a special meaning, the examiner should, so far as possible, require the claim to be amended whereby the meaning is clear from the wording of the claim alone. The claim should also be read with an attempt to make technical sense out of it. Such a reading may involve a departure from the strict literal meaning of the wording of the claims. »
Indeed! But what should an OD (or a TBA on appeal from the OD) decide when the ED has failed, and your “highly restrictive conditions” are met and a definition in the B publication description meets those conditions, to override the plain meaning of the granted claim 1?
What reasonable alternative does it have, other than to construe the claim in line with the definition?
Your PCT Guidelines include the words “as far as possible, require”. How, after grant, is it possible to require that the definition goes into the claim? In the absence of the Art 84 hammer, what is the penalty to be imposed on the patentee, for failing to import the definition? If it is to find the claim invalid, under which provision of the EPC?
I have already upset M. Thomas. I hope not to upset you too, with my endless banging on about this point.
To Mr Hagel and Max Drei,
It really depends on the situation whether the meaning in the description is to be taken into account or not. There are two different situations to consider.
1. Broad claim-limiting definition in the description
1.a If a proprietor claims that its patent is valid with respect of the prior art as the definition in the description is more limited than in the claim, then the definition in the description ought to be ignored, and patentability under Art 52-57 ought to be assessed on the basis of the broader meaning in the claim.
1.b Conversely, should a proprietor claim infringement in view of the broad interpretation of the claim, then the limited meaning ought be taken into account in order to dismiss the infringement.
1.c If the applicant/proprietor wants the definition in the description to be taken into account he will have to introduce it in the claims. Even in post grant situations filing of a limited claim is in principle acceptable.
Whatever the situation might be, the proprietor should not profit from the discrepancy between claims and description.
2. Limited definition in the claim-Broader definition in the description
2.a If the proprietor claims that its patent is valid with respect to prior art as the definition in the claim is more limited than that in the description, which is broader with respect to that in the claim, then the definition of the description ought to be taken into account in order to asses patentability under Art 52-57.
2.b Conversely, should a proprietor claim infringement in view of the broad definition in the description to that compared to the limited one in the claim, then the definition in the description ought to be ignored and it is the claim wording which is to be taken into account in order to dismiss infringement.
2.c. If the applicant/proprietor wants the definition in the description to be taken into account, he will have to introduce it in the claims before grant. After grant, the proprietor will not be allowed to introduce the broader definition of the description in the claims, as this would be contrary to Art 123(3).
Whatever the situation is, the proprietor should not profit from the discrepancy between claims and description.
3. Same interpretation of the claims in validity and in infringement
3.1 When the interpretation given in the description has to be taken into account, and at the same time, be it for validity or infringement, the interpretation of the claims should be the same, then, before grant, the interpretation of the description has to be introduced in the claim.
3.2 This is exactly what the boards have said in the decisions following G 1/24: a different interpretation of the claim in view of statements in the description, and in contradiction with that in the claims is not acceptable.
3.3 If there is a discrepancy between claims and description, this should not benefit to the proprietor. In order to avoid this damageable situation, claims and description should be aligned before grant.
3.4 This is exactly what has been queried in the two decisions of the UPC-CFI of the LD Hamburg and the LD Paris amply discussed here. In both decisions, the UPC-CFI observed that the inconsistency between claims and description should have been removed before grant.
4. Conclusion
If the inconsistency is not removed before grant, the different ways suggested above here could be applied and not allow the proprietor to be in the comfortable situation of having his cake and eating it.
It could not be simpler, and there is no need to refer to general legal theories or what could have been meant in G 1/24 when it comes to “consulting” the description. In all the situations explained above, the description has been “consulted”.
However, the result of the “consultation” does indeed depend of the situation.
@MaxDrei
I pleased to say that I generally agree with Mr Thomas’ answers. I will add a few remarks though.
Art 84 is applicable post-grant when the claims are amended. This is clear both in opposition proceedings and in limitation proceedings of UPs before the EPO (GL D-X 4.3).
The rule that claim interpretation must be the same for validity and infringement is an efficient bulwark against playing the Angora cat.
The requirement of G 1/24 that the description be consulted puts the pressure on the EDs and ODs’ for thorough scrutiny of compliance with Art 84. This implies that a cursory review of the description is not sufficient. It is now the EPO management’s responsibility to take appropriate actions to this effect : training, IA tools suitable to help examiners, possibly review of their production objectives (I am optimistic !).
I happened to attend this morning a briefing for SQAP assessors. As you may know, SQAPs involve audits of recent files by hybrid panels including 2 senior EPO examiners and 2 seasoned pratitioners, organised by the EPO quality management. The findings are published in an Annex of the annual quality report. I pointed out that in my audits, I will be particularly attentive to the « consultation » of the description by the EDs.
Mr Hagel,
I read your comment with interest.
I can agree that Art 84 is applicable in opposition or limitation. I would however add within the limits of G 3/14. As soon that a claim is amended, other by combination of granted claims, Art 84 applies as far as clarity is concerned, but the description has to be adapted pursuant to Art 84, support, irrepective of the amendment carried out in the claim. If a dependent claim is added to an independent claim in order to limit the latter, any statement as to the optional quality of a feature in a dependent claim, has to be deleted in the description.
I can also agree with you that G 1/24 will require EDs and ODs to look at the description. This is a consequence I mentioned early in my comments, and it is good so. I know for a fact that, during my active time, corresponding oral instructions were given by some of my colleagues directors: as Art 84 is not a ground of opposition, why bother about it. If you understand the claim, you do not need to look at the description. I never supported this point of view, be it only in order not to be confronted in opposition with the mess caused by an unclear granted claim.
I can also agree with you that it is now the EPO management’s responsibility to take appropriate actions to this effect. When one sees that in lots of cases inconsistencies between claims and description have subsisted after grant, it is manifest that the description has not been amended when the ED decided grant. See the decisions of the UPC LD Hamburg and Paris. The are abundantly clear in this respect.
It is just to be hoped, that the upper management’s fascination for high production figures, i.e. a high number of grants, to the satisfaction of the AC, should not be responsible for only a temporary application of G 1/24 by first instance divisions. It is not a flash in the pan that we need, but a long lasting action.
This is just to say Thank You, to francis hagel but mostly to Daniel Thomas, for their comments of September 11. and 12. How an independent claim in a granted European patent ought to be interpreted in the context of its supporting description is clearer now than it was before I read those postings. It took a 30+ comment thread to get there, but it was worth it, at least for me.
@ Anonymous,
Thanks for your kind words.
In the meantime, I have realised that all the important aspects to take into account are scattered in various comments.
I have tried to devise one paper in which all those different aspects are brought together. It will be published on 15.09.2025.
I am curious to see what you will think of it.