EP 3 273 809 B1 relates to heater management, particularly to heater management in an electrically heated aerosol-generating system.
The invention exploits the fact that the temperature of the heating element (36) is related to its electrical resistance, see § [122] and [124]. To detect an adverse condition, the electronic circuitry measures the heating element’s initial resistance and its resistance at a time after the initial delivery of power. The adverse condition is then determined based on the measured resistances and a threshold value stored in memory.
Brief outline of the procedure
For the OD, claim 1 as granted lacked N over D14=WO 2014/203083. The OD decided maintenance according to AR1.
Proprietor and opponent appealed this decision.
During OP before the board, the proprietor withdrew its appeal.
The board held that claim 1 as granted was novel over D14, but lacked IS over the same. .
The board confirmed maintenance according to AR1.
The case is interesting as it deals with the application of G 1/24, and what the board calls the “explanatory use of the description”.
The OD’s interpretation
In light of paragraph [17], the OD considered claim 1 not to be limited to a comparison between a resistance ratio and a threshold value=”ratio-based comparison”, which is immediately apparent from the claim, but also to encompass an equivalent comparison between a measured resistance and a resistance threshold derived from the initial resistance and a stored threshold value= “direct comparison”,
The interpretation of features 1.8 and 1.8a constitutes a crucial and contentious aspect of the OD’s novelty assessment.
Taken together, these features state that the electronic circuitry is configured to:
“determine an adverse condition when a ratio between the measured initial electrical resistance of the heater and a change in electrical resistance from the measured initial resistance is greater than a maximum threshold value [stored in the memory]“.
The opponent’s interpretation
The opponent submitted that the OD’s interpretation was also supported by paragraphs [126] and [128] of the patent. Paragraph [126] discloses the ratio-based comparison between (R – R0)/R0 and the factor K = α(Tmax – T0), whereas paragraph [128] explains that the equivalent direct comparison may be carried out by comparing the measured resistance R with a maximum resistance given by R0(K + 1).
Furthermore, the opponent argued that it was apparent from the application as filed that the claim, which had not been substantially amended during examination, was from the outset intended to cover both comparisons.
The proprietor’s interpretation
The proprietor argued that the wording of claim 1 was clear: a ratio in the form (R – R0)/R0 was to be calculated and compared with a threshold stored in memory. Any alternative comparisons mentioned in the description, in particular the direct one in paragraph [17], were outside the claim’s scope.
Furthermore, since the claim clearly defined the ratio-based comparison, no interpretation was required and there was no justification for referring to the description at all.
The board’s decision
The board agreed with the OD that features 1.8 and 1.8a cover both the ratio-based comparison and the direct comparison.
Contrary to the proprietor’s view, these features do not define specific mathematical operations to be carried out; they merely specify the condition under which the adverse condition is to be detected,
As long as that condition is detected, the claim leaves open how the detection is achieved mathematically and therefore encompasses any mathematical method of doing so. A recourse to the description, as required by G 1/24, confirms that one envisaged way of detecting this condition is the direct comparison described in paragraphs [17] and [128], the other being the ratio-based comparison disclosed in paragraph [126].
Explanatory use of the description
For the avoidance of doubt, the board noted that the present case differs from situations such as that in T439/22, Reasons, 2.4, 3.4 and 6, in which the description and drawings were relied upon to broaden the scope of a claim beyond what was conveyed by the claim wording read in isolation.
Here, by contrast, the description served an explanatory and confirmatory function by assisting the skilled reader in recognising an embodiment already encompassed by the claim wording, without altering the scope of the claim.
More specifically, it explains that features 1.8 and 1.8a cover not only the ratio-based comparison, readily apparent from the claim wording, but also the much less apparent direct comparison.
It is reasonable to assume that, without consulting the description, reaching the latter conclusion would, at the very least, not have been straightforward.
This modest explanatory and confirmatory use of the description is consistent with the principles set out in G 1/24, see T 2027/23, Reasons, 3.5.2.
Comments
The decision is interesting in that it makes clear that the description which, according to G 1/24, has always to be “consulted”, can not only contain a broadening or limiting interpretation of the claim which has to be read in the latter, cf. T439/22, or a limiting feature which will only be taken into account if incorporated in the claim, cf. T 2027/23.
The description can also be used to explain some of the features of the claim, and might show that the claim actually encompasses two different modes of realisation, even if the proprietor has a different view on the matter.
T 2027/23 has made clear that from G 1/24, it cannot be inferred “whether the description and the drawings should be “consulted” for the purpose of, for example, deriving “explanatory aids” to claim interpretation”. This is the position adopted by the UPC in UPC_CoA_335/2023, Headnote 2.
G 1/24 is an open decision and it cannot be interpreted as it has been done in T 439/22, i.e. read in the claim broadening or limiting features found in the description.
Rather, it the position taken in T 2027/23 and the like, which should prevail. If an applicant/proprietor wants the limiting interpretation found in the description to be taken into account, the claim should be amended accordingly. Conversely, the applicant/proprietor cannot hide behind a limited claim when the description broadens the limiting feature in the claim.
The present decision also shows that the claim can encompass different modes of realisation found in the description. What matters is that there is no inconsistency between claims and description. An explanatory use of the description cannot be interpreted so that a limiting or broadening of a claimed feature has to be read into the claim.
All those decisions represent by now a clear and unambiguous body of case law which should be followed by the other boards.
On the procedure
The ISR established by the EPO only revealed 3 documents of category A.
All those documents bear as classification unit A24F40/53. D14=WO 2014/203083 and the patent bear the classification unit A24F40/53. The search having been carried out in A24F, it is thus highly surprising that D14 was not found during the original search.
Comments
25 replies on “T 2043/23-Application of G 1/24 – The explanatory function of the description”
Being British, Daniel, I could not resist commenting on this one, as soon as I read your excellent summary, saw that each of the opposed parties was represented by a leading UK firm, arguing about whether a US-originating claim was “clear”, then turned to para 2.2 to 2-10 of the Decision and found myself in full agreement. Well done, this Board, in suggesting how the EPO, in day to day practice, is to be guided by G1/24.
I am thankful that it was not my job, to argue to the EPO that claim 1 was so clear, in itself, that no interpretation was needed and no justification for referring to the description. That said though, I would have enjoyed being in the room to listen to the efforts of the proprietor’s atorney to convince the Board of that premise. It was Churchill, I think, who observed that the UK and the USA are two countries divided by a common language.
What do other readers think though? Who thinks the Board got this one wrong?
Dear Max Drei,
Nice to hear from you again.
I think that in view of G 1/24 it was foolish from the proprietor’s representative to argue that the claim as granted was so clear that the description need not to be consulted. He most probably wanted at any rate that the description was not consulted as D14 was highly relevant for his granted claim in its generality. This was to no avail and rightly so.
I doubt that besides the proprietor and its representative you will find many readers agreeing that the board got it wrong.
Yes, Daniel, nice to be in dialogue again. I have two thoughts on your reply to mine.
First, as representative one is quite often in the difficult position of being asked by the client to run arguments which one personally finds foolish. We EPO representatives do not possess the wider international picture enjoyed by the in-house patent attorney who is giving us our instructions (and paying our invoices). Sometimes, what to us seems foolish might seem not at all foolish to our client. You can probably imagine what potential there is, here, for conflict between EPO representative and their instructing US patent attorney. Clients have been known to shift to a different EPO representative firm as a consequence of such exchanges of view.
For example, there may be ongoing litigation elsewhere in the patent family, in a jurisdiction more important than Europe. Anything said (or not said) by the client at the EPO can be noted and used against that client, by their adversary, in another jurisdiction elsewhere in the world. I have in mind, of course, the USA. For that reason alone, one might have to advance foolish arguments at the EPO, despite one’s protestations that at the EPO it won’t do any good any might well do harm.
Second, this problem can be even worse when one’s instructions are coming not direct from the corporate client but from a law firm resident in (say) the USA. That firm has its own position and integrity to defend. Suppose for example that the claim here in view was drafted within the US law firm giving instructions to proprietor’s EPO representative. One might imagine that, all along, that US law firm has steadfastly maintained to its client that the claim it drafted is 100% clear, on its face, all alone (as opposed to being so lacking in clarity that only by turning to the description can one find out what the claim means).
Incidentally, only under the cover of anonymity could I dare to put such observations on public record in your estimable and widely-read blog. As you say, there are benefits for your readership, in allowing anonymous comments.
Dear Max Drei,
I am not opposed in principle to anonymous comments, although it is a difficult topic. Some comments look anonymous, but sometimes the e-mail address is clear. I would never reveal it. I am fully aware that by giving his name a representative could come in dear trouble with his clients. If the comment is not derogatory or insulting, but most important, if it can contribute to the discussion, I would be the last to refuse its publication.
This blog is to my knowledge one of the few blogs in which comments are published without pre-screening. I find this positive and I am the last wanting to change this. As a counterpoint, I take the discretion to delete some comments I consider inappropriate. Most of the comments I have deleted were those which did not bring the discussion forward.
I am also fully aware that representatives have sometimes to say foolish things in the name of their clients. The representative has to do what he is told, even if he is fully aware that its rubbish. I would never take it against the representative. One prime example: we got this patent in our home country, so we want the same in Europe. This is typical in US originating applications. Agreed, but the law is not the same on this side of the Atlantic. This makes a huge difference.
Another country which is delicate when it comes hard on hard: Japan. Not getting a patent often means loosing face, so that it is difficult to accept that the application might be refused or severely limited.
I have sometimes also seen this subtle presentation: we have been required to bring forward this argument to your attention or the like. I remember one case in my early days. The representative was honest and said that he came to the OP as required by his client, but he was aware that it would end in a refusal. The OP was short, but the minutes showed that we had a long discussion on the arguments presented by the representative. I valued this attitude.
Rather such honesty, than a representative telling you without blushing, that the function, its first and its second derivative is all the same, or frequency modulated or amplitude modulated is all the same, it is modulated. It is not hearsay, I heard it myself. Some representatives tell you in the face that if I tell you this or that, you have to accept it as I am right. I could write much more. I do not value this kind of attitude of taking me for a ride or being arrogant.
When I lecture on OP, one of my first advice is to say that if you want to get a positive outcome for your client, do not start antagonising the deciding body. Bring your arguments, but do not insist on flogging a dead horse.
I agree with Mr Thomas that the Board got it right. Their self-styled « modest » approach is welcome. It seems to me they applied the broadest sensible interpretation of the case law, consistent with G 1/24.
I note though that while the decision contains many references to the skilled person, it never defines the art of the skilled person, and the CGK of the skilled person relied upon is not substantiated.
In this respect, it is worth mentioning that every decision of the French Patent Office in opposition proceedings begins with a section on claim interpretation, the first part of which is a definition of the skilled person. This is also the case in UPC decisions, whether they deal with validity or infringement or both. This ensures that the definition of the skilled person is the same wherever it is used and cannot be an angora cat.
At the EPO, the 2025 quality report recently published singles out differences as to the scope of the CGK as a serious quality issue in opposition proceedings. My experience is that unsubstantiated references to the CGK are also common during examination. The likely cause is that the skilled person has not been defined.
Thank you, fh, for an interesting comment. Mr Thomas can write more, and I hope he will, but my gut feeling is that, at the EPO, devoting time and effort to arrive at a definition of the hypothetical “skilled person” would be inefficient, is unnecessary and indeed counter-productive.
Why? Because the members of the EPO tribunal hearing the case (OD, TBA) are well able to listen to the opposing arguments of the parties and decide accurately what (in the context of the case being heard) is cgk and what is not.
Conversely, in a court of law with non-technical judges, all the work spent defining the attributes of the skilled person is, I suspect, merely an effort by those judges to compensate for their lack of technical competence at the level required. I think they use the enquiry into the skilled person as a means to bring themselves up to the level of grasp of the technical subject matter necessary to do justice to the case.
As to pre-grant ex Parte proceedings at the EPO, the ED is free to postulate what the cgk is, and the Applicant free to argue otherwise. One hopes that the ED, or the TBA on appeal, is open to persuasion on the decisive issues. I have no reason to doubt it. Do you?
Dear Max Drei,
I wrote my answer to F. Hagel before I read this comment of yours.
I have nothing to add, as your comment confirms what I have said to F. Hagel.
I have simply added some case law about CGK.
Mr Hagel,
In all my active career, I have very rarely experienced the necessity of defining the skilled person. It is manifest that the skilled person is the person dealing with the object defined in the preamble of the claim at stake. In the absence of a preamble, the skilled person is the person dealing with the CPA. It may also consist of a group of persons.
First instance division are composed of at least 3 TQE, and the boards comprise at least two TQM. There is thus no need to spend time defining the skilled person. The latter is perfectly defined in the Guidelines G-VII, 3, and its knowledge is defined in G-VII, 3.1. More is not needed. The likely cause is that the skilled person has not been defined is not the problem. The problem is that it is more easy to simply allege CGK as it saves the bother of looking for documentary evidence.
Civil law judges, comprising those at the UPC, have an absolute need to define the skilled person and also have to interpret the claims. This is due to the fact that, by nature, and this is by no way a reproach, they have no technical knowledge and imperatively go through those steps to come to a correct decision. That the French patent office has to define the skilled person in their opposition decisions is most probably due to the fact that the second instance is the Paris court of appeal. Only Paris courts are competent in France with matters of invalidity and infringement. .
CGK is in principle to be found in standard books and reference works, see T 1641/11, T 263/12, T 1819/14, or T 1540/14, and not in patent documents. A norm, e.g. “DIN EN 14371” can represent CGK. Documents of category A in the search report are not representative of common general knowledge, cf. T 336/21. This also applies to specialized journals, cf. T 1997/11 or scientific papers, cf. T 1651/13 or T 1727/14. A doctoral thesis is also not representative of CGK, cf. T 1832/14.
At least in first instance, CGK is never late as it is inherent to his knowledge, cf. T 987/01 and T 378/15. Another definition: CGK does not bring about a change in the legal and factual framework of the proceedings, cf. T 759/08.
In T 488/16, the board held that the opinion of highly skilled experts on how a disclosure of a document is to be understood, does not reflect the view of the notional skilled addressee, who is a person of ordinary skills aware of what is common general knowledge in the art at the relevant date. Experts give evidence based on their professional experience and expertise, which is not CGK, and will have an influence on their way of reading the disclosure of a document. Experts pay an important role in the UK, but there they are cross-examined, which is not part of procedures before the EPO.
In T 1193/23, the proprietor used the output of a chatbot (ChatGPT) to define some features of the claim as being representative of CGK. This was not accepted by the board.
What else do you need?
I do not agree with T 1092/12, T 1370/15 or T 2526/19. In those decisions the boards held that a board is allowed to introduce new ex officio CGK without evidence of such knowledge which prejudices maintenance of the patent to the extent that the board is knowledgeable in the respective technical field from the experience of its members working on cases in this field. When you see those board’s decisions, I am not wondering that first instance divisions are tempted to do the same.
I do agree that CGK has to be documented and not simply alleged. As I look at lots of decisions, it strikes me that in numerous cases, opponents come with documents representing CGK. Such documents are quasi never mentioned in the search reports established by the EPO. My observation goes thus further than yours, and any allegation of CGK without the corresponding evidential proof has to be dismissed.
Looking at decisions published since July 1st, 2 decisions show evidence of CGK provided by the opponent, T 1439/24 and T 1195/24. T 1154/24 and T 0165/24 refer to CGK without any documentary evidence.
I know for a fact that documents representing CGK are present on the premises of the EPO. What about digitising those, so that they are present in the search files. For instance, norms and IEE standards are available at the EPO, they do not seem to have found their way in the search documentation.
Mr Thomas,
Thank you for your considered response. I see that we agree on the need to provide substantiating evidence for the CGK relied upon during examination or opposition.
The CGK is that of the skilled person, so that the skilled person has to be defined for the CGK to be adequately substantiated. I note that you refer for a definition to the preamble of the claim or to the CPA, But this may leave some uncertainty. The advantage of a definition is to ensure the skilled person and CGK are the same for all purposes – inadmissible extension, novelty, IS, sufficiency, claim interpretation – so as to avoid angora cats. As you know very well, the definition of the skilled person and the scope of CGK are inherently angora cats, since an applicant or patent owner is typically interested in a narrow definition for novelty & IS assessment but in a broad definition for sufficiency & extension assessment.
Mr Hagel,
Like any argument based on prior art, CGK has to be supported by documentary evidence.
Only for very trivial features, CGK might not have to be supported by documentary evidence.
I still disagree with you that it is absolutely necessary to define the skilled person, so as to come to a correct appreciation of the CGK.
Unless for pioneering inventions, which are nowadays rather rare, it is not difficult to define the skilled person and its CGK when looking at the field of the invention.
The skilled person can be considered as a technically qualified person, aware of all the tricks of the trade in the field at stake.
In certain fields, it may even be a group of people, such as a research or production team.
That the skilled person ought to be the same when it comes to assess inadmissible extension, novelty, IS, sufficiency, claim interpretation or clarity, goes without saying. Anything else would be ludicrous.
What is different is the overall knowledge at the at the disposal of the skilled person.
When it comes to inadmissible extension, sufficiency, claim interpretation or clarity, the skilled person can only rely on the application as filed and to the CGK in the field at stake.
When it comes to novelty or IS, the skilled person has at his disposal, next to the CGK in the field at stake, the application as filed, but also all prior art available published before the effective date of the claim.
If you consider that the skilled person is no more than an agora cat, then you have a very strange conception of the skilled person and of its knowledge.
I have never shaken hands with a skilled person, as it is a notional person, but I do not think that I ever needed to define it precisely. If the skilled person acts like an Angora cat, it is not a skilled person, but a very partial person.
For an opponent, the skilled person is always hyperintelligent and would combine any piece of prior art leading to the claimed invention.
For a proprietor, the skilled person is thick as two planks, and would never combine any two pieces of prior art together.
The middle way is the best, and it is not difficult to come to a reasonable solution.
By referring for a definition of the skilled person, one can refer to the preamble of the claim or to the field of the invention, which then allows to define the CPA. I cannot see any uncertainty left it this is done properly. The criteria for selecting the CPA are well established by the case law of the boards and the Guidelines.
With deciding bodies comprising a majority of technically qualified members, it is not normally necessary to define the skilled person and hence its knowledge. I fail to see here any uncertainty.
@MaxDrei & Mr Thomas
As to the skilled person, I do not quite agree with the view that given the technical background of examiners and Board members, no definition is needed. Let me quote the CLB I.D.8.1.1 :
“In T 1462/14 the board noted that the skilled person was a notional entity that had been elaborated on by the case law of the boards of appeal in order to serve as an objective reference when deciding on various issues under the EPC. This notional person could not be equated with any real person in the technical field of the invention. Neither an inventor, nor an opponent, nor an examiner, nor a member of a board of appeal, could be equated with the skilled person. This also applied to a representative. »
The skilled person, albeit a notional entity, is specialised and possesses the CGK specific to the field of the problem to be solved. The technical skills of examiners and Board members are unlikely to encompass the specific CGK of all the cases they have to deal with.
In addition, examiners and Board members, and patent practitioners as well, feature a highly developed intellectual agility in sharp contrast with the attributes of the notional skilled person : specialisation and lack of creativity. Patent people are not always aware of this difference.
This is an interesting discussion. I have the feeling that there is more that we three agree upon than disagree. For example, there is no living human being has all the attributes of the notional “skilled person”. In England, the opposed parties present the evidence of technical experts and then, when the parties disagree about a particular fact, there is cross-examination and the court then decides on the basis of witness evidence given under that examination. It is an expensive system but it is not often deployed because (under the threat of x-exam) most of the relevant facts, if not all, are not disputed all the way to the full trial. If you have ever witnessed in court the forensic examination of a technical expert, by a top barrister who has been intensively briefed already by their own side’s technical expert, you will appreciate what an ordeal it can be for an expert trying to convince the court of what we might call a “dodgy” fact.
Proceedings at the EPO are different, because the tribunal is required itself to find what are the facts, based on the argument and documentary evidence presented by the parties.
But whether the evidence that persuades the court is witness evidence or documentary evidence, the court has the same burden, namely, to declare what are the facts the skilled person knew, and which they did not. I’m still not convinced that the EPO must carry a responsibility to formulate a definition of what are the attributes of the notional “skilled person”.
Just to make it clear, those technical experts in England are not testifying as to what they personally knew. Rather, they are explaining to the court what a person of ordinary skill in the relevant technical field knew, at the relevant date. Who better than an outright expert, a career-long specialist in that technical field, to explain to the court what ordinary workers in the field knew or did not know, at the televant date, a date likely ten or even fifteen or more years earlier than the date on which they give their evidence?
Dear Max Drei,
It is good that you made clear to the audience that what is at stake in front of an English court, is not the personal knowledge of the expert, but its ability to explain to the judge what could have been the CGK of the notional skilled person at the effective date of the claim. Not an easy task, but thanks x-examination, the result is to be accepted.
After all is the evidence of the CGK which matters, and not the specialised knowledge of an expert. That such a procedure is rather expensive is manifest.
Expensive? Sure. But there are some cases where expense takes second place to the business imperative of not losing the case, regardless how much money it takes. These blockbuster cases shape the law in England.
Dear Max Drei,
I was thinking of English cross examination when it came to the definition and the knowledge of the skilled person at the EPO. This is not necessary at the EPO
That CGK cannot be merely alleged but has to be supported by evidence, be it by x-examination or documentary evidence.
I agree with you that there is no need at the EPO to come to the lengthy way of looking at a file like it is done before civil courts.
For the surplus, look at my reply to F. Hagel on its last entry.
@MaxDrei
As a follow-up on your mention of UK proceedings and the cross-examination of expert evidence, I was very impressed by the insightful outcome of cross-examination in L’Oréal vs RN Ventures [2018] EWHC 173 (Pat) of 05 February 2018 relating to a skin treatment device.
In this case, expert evidence subject to cross-examination convinced the judge that while a shear mode embodiment was deleted from the claims and the description during EPO examination and only a tension/compression embodiment was ultimately claimed and described, the latter embodiment would actually create a shearing effect.
But as you and Mr Thomas point out, UK proceedings are very expensive, since the taking of evidence and cross-examination entail high charges for barristers’ fees and solicitors also charge fees for instructing the barristers.
Mr Hagel,
You apparently cannot let lose.
Whilst I fully agree with reasons 14 of T 1462/14, I strongly disagree with the interpretation you make of this decision. The quotation might, as such, be correct, but is taken totally out of the context in which it was issued.
By stating that “examiners and Board members, and patent practitioners as well, feature a highly developed intellectual agility in sharp contrast with the attributes of the notional skilled person : specialisation and lack of creativity”, you are not giving any credit to the members of the EPO. I cannot accept this. That at the same time you criticise representatives is irrelevant to me.
You voluntarily or not, for whatever reason, ignore the abundant and established case law on the knowledge of the skilled person at the EPO and the way the notional skilled person is used in decisions of the EPO.
In T 1462/14, the core of the discussion was on added matter. The main argument of the applicant was to say that it was obvious for the skilled person to generalise the very specific teaching found in the description. A classical point of view for an applicant/proprietor. The applicant added that, in contrast, this could not be done by a lawyer, implying that a lawyer has no technical knowledge, which is prima facie correct. Nothing more is to be taken from this decision.
When it comes to added matter, applicants or proprietors often argue that on the basis of its CGK, it might be obvious to generalise a specific teaching, putting aside the notion of directly and unambiguously derivable which is also part of the skilled person’s knowledge.
It goes without saying that the generalisation was abusive and clearly offended Art 123(2).
This brings me once again to a clear requirement when looking at the CLBA=the white book. When you find a decision which could be supporting your point of view, you cannot dispense yourself of looking at the actual decision and to see in which context it has been given. I would like to remind the audience that the white book is not vetted by the boards, but is issued by the legal service of the boards and the quotations in the white book are the interpretations given by the members of this department and not that of the boards themselves. I would never accept prima facie a quotation from the white book.
Looking at the full context of T 1462/14, it gives a totally different view from that in the CLBA. In this decision, the board never defined the skilled person, there was no necessity for this, but the board made clear that the skilled person would realise that there was a undue generalisation as what was claimed was not directly and unambiguously derivable from the originally filed documents.
You can find the full decision T 1462/14 under the following link:
https://www.epo.org/en/boards-of-appeal/decisions/t141462eu1?term=%22T%201462%5C%2F14%22
I invite you to “consult” the decision.
I repeat that at the EPO, there is no need to define the skilled person. The members of the deciding bodies at the EPO can clearly and unambiguously get to grips with the skilled person and its knowledge without having to define it.
Mr Thomas,
Sorry for the tardy response.
I do not quite understand your comment that I gave no credit to the EPO members when I referred to their highly developed intellectual agility. This was laudatory, by no means critical. And this was not meant to only apply to EPO members, the same applies of course to the other patent offices’ personnel, and to patent practitioners. This agility is simply linked to the specificity of patent people, who have to consider ona daily basis the transfer of knowledge from a technical field to another. I wanted to point out the contrast between this agility and the attributes of the skilled person, typically specialised and devoid of creativity, and suggest that the EPO members, responsible for making decisions as to what is the art of the skilled person and the scope of their CGK, must avoid stepping into the shoes of the skilled person.
As to the need for a definition of the skilled person, I think it is sensible to place the discussion in context and mention the difference between examination and opposition. In opposition proceedings, it is quite common for opponents to raise several grounds : inadmissible extension, sufficiency, novelty, IS. For every ground, the skilled person and their CGK come or may come into play, and there has to be one and the same definition of the skilled person and CGK for all issues. In addition, these definitions are frequently disputed, in particular, the CGK, hence the need for providing documented evidence for the CGK put forward by the parties or the EPO OD. As I said in a previous comment, the 2025 quality report published in July, 2026 in its opposition section, cites the CGK as a source of divergence between ODs and the Boards and a quality problem that needs to be addressed.
This seems to be less a concern during examination, for various reasons. However, the requirement in G 1/24 to always consult the description implies an increased role of the skilled person and their CGK. Regardless, I think we agree on the need to substantiate the CGK when it is applied by the ED. As to the need to define the skilled person, we do not agree. I expect future decisions to clarify this issue.
My feeling at the moment is that the EPO management will anyway instruct and train examiners to ensure CGK when applied are properly documented, as a matter of quality of the process.
The word “define” is (at least in English) a bit tricky. I think we might have to wait a long time before anybody at the EPO attempts a definition. A bit like the word “invention” perhaps. Hard to define and, at least for reasons of judicial economy, best left undefined.
Otherwise attempts to declare what are specific individual facts known to the notional skilled person, in any one particular case. Their “mental furniture” as it were. I can see the need for that.
But whatever. It is a worthy wish, that future EPO decisions continue to clarify EPO jurisprudence.
Dear Max Drei,
As the skilled person is a notional person, it is indeed very difficult to “define” it thoroughly. Before civil courts it has to be defined in order to come to a reasoned decision.
However, the discussion will remain about the actual knowledge of the skilled person and more important how it will be used. I think that opposing parties will always have opposing views on this topic.
Jurisprudence can certainly help, provided we do not get too many divergent decisions.
@ Mr Hagel, in reply to @MaxDrei & Mr Thomas
The game is over. You are merely repeating, ad nauseam, what you have said before.
In this situation. I have decided to delete your comment as it does not bring the matter forward. You have already been warned.
That the French patent office, the Paris cour d’appel, the French cour de cassation, and the UPC feel the ned to define the skilled person is their good right which I do not dispute.
France is one of the many contracting states of the EPC and the UPC has no organic links with the EPO. Why should the EPO adopt one specific solution as it has to care for many more contracting states?
You have made amply clear that you would like the EPO to define the skilled person in its decisions. I fear that it will remain wishful thinking.
You have already explained your views on whether the art of the skilled person ought to be decided before selecting the CPA. I told you already how the references in the CLBA should be appreciated.
It is possible to acknowledge that there are two ways in practice at the boards, but the number of cases following T 1450/16 is rather low compared to the majority of decisions not following said decision. Eventually, it will be for the EBA to decide.
Mr Hagel,
I might have misunderstood your comment on EPO members and members of the profession. If for you it was laudatory, then there is at least a problem under Art 84 in your statement. Chapter closed.
I cannot follow you whatsoever when you consider that the skilled person is different in examination and in opposition. The legal rules governing validity are exactly the same in examination and opposition. The logical consequence is necessarily that the skilled person cannot be different between examination and opposition. It is the same notional person with the same CGK.
I have tried to explain to you. that, depending on the legal rule at stake, next to his CGK, it is the knowledge at the disposal of the skilled person which can be different. When it comes to sufficiency and added matter, only his CGK and the content of the originally filed documents are at his disposal. When it comes to novelty and inventive step, next to his CGK and the content of the originally filed documents, the skilled person has at his disposal any piece of prior art published before the effective date of the claim.
Repeating that the absence of evidence for the CGK is a quality problem at the EPO does not bring matters forward. This is manifest. It is certain that the EPO management will insist that evidence of the CGK has to be provided in examination. In how far this will be reflected in the reality is something quite different. I fear that with the ever increasing production pressure it will remain wishful thinking. This has, alas, happened before. The next topic needing attention will pop up and the old one will be forgotten. This is human.
For the rest, I have not seen from your side any compelling reason why, in general, the skilled person has to be defined at the EPO. The situation is fundamentally different for civil law judges and lawyers. I thus have to come the the conclusion is to agree that we disagree.
@ Max Dre-31.07.2026
When a patent dispute ends before a court, I would say that, in general, it becomes expensive. Going to court always appears as a kind of ultima ratio.
From what I know, patent litigation is more expensive in the US and in the UK. Seeing the levels of recoverable costs at the UPC, I think that the latter might join the club.
I do fully agree that having a patent for a blockbuster warrants some financial efforts. However, it means that only litigants with deep pockets can afford to go to court and be properly represented.
I doubt that this is the case of most SMEs. It is certainly not the case for individual applicants/proprietors or start-ups. This is a major problem I see with the UPC, in spite of any ceilings on recoverable costs when the case is lost. This finding is compounded by the fact that barely a third of EPs are held by proprietors residing in the UPCA contracting states.
We are getting off the subject but as to who owns European patents we don’t want them all owned by Europeans, do we? Rather, we want all the world to invest in Europe. Compare the other four biggest Patent Offices. Is it healthy if only Americans litigate patents in the USA, or only Chinese companies in China? As with most every other field of human activity, we need a healthy and competitive balance between opposing commercial interests. Is such a balance truly lacking, in litigation at the UPC? I’m not yet convinced. You say “barely a third”. To an extent I agree that this is not optimal. Fifty -fifty seems to me a healthier balance. Europe should try harder.