Brief outline of the case T 2475/18
In T 2475/18, the patent relates to a device for dispensing a fluid product comprising a blockable actuation element, actually an injection pen.
The patent was revoked by the OD and the proprietor appealed.
The OD considered that none of the requests on file were in conformity with Art 123(2).
In appeal the proprietor requested maintenance in amended form on the basis of the MR as filed in opposition or on AR 1-8 filed when entering appeal.
The board held that the MR did neither infringe Art 123(2) nor Art 123(32).
The OD’s decision was set aside and the file remitted to the OD for further prosecution.
Brief outline of the case T 1473/19
In T 1473/19, the invention relates to contactless rotary joints which may may be used in CT scanners.
The opponent appealed the rejection of its opposition.
Some features of claim 1 as granted could be interpreted in two different ways and with one of those interpretations, claim 1 as granted was infringing Art 123(2).
A request for correction under R 139 was refused and all the AR were not allowable.
Eventually, the patent was revoked.
Art 123(2) and Art 69
Art 69 is not applicable when determining added subject matter
Some decisions, e.g. T 30/17, provide that Art 69 and its Protocol do not provide a basis for excluding what is literally covered by the terms of the claims.
In T 30/17, the board referred to e.g. T 1279/04, Reasons 3 and T 1404/05, Reasons 3.6.
In T 30/17, the board added that, according to the established case law, a (purported) discrepancy between the claims and the description
- is not a valid reason to ignore the clear linguistic structure of a claim and to interpret it differently, cf. e.g. T 431/03, Reasons 2.2.2 and T 197/10, Reasons 2.3.
- or to give a different meaning to a claim feature which in itself imparts a clear credible technical teaching to the skilled reader, cf. e.g. T 1018/02, Reasons 3.8; T 1395/07, Reasons 4.
In T 1279/04, Reasons 3, the board stated that the application of the principles of claim interpretation as laid down in Art 69 and the Protocol was limited to the determination of the extent of protection, which was primarily of concern in infringement proceedings. It further indicated that in examination and opposition proceedings before the EPO, Art 84, first sentence, provided a legal basis for applying “a strict definitional approach”.
This approach to claim interpretation, in T 1279/04 also called “a strict literal definitional approach“, seems to correspond to an approach based on the “strict, literal meaning of the wording used in the claims”, i.e. according to T 1473/19, an approach which is explicitly rejected under Article 1 of the Protocol.
Art 69 is applicable when determining added subject matter
In T 1473/19 the board noted that on the one hand in very many decisions the description and the drawings have been used to interpret the claims and identify their subject-matter and quoted as example T 1167/13, Reasons 2.2 and 2.3 and T 2773/18, Reasons 2.3; as well as Case Law of the Boards of Appeal, 10th edition 2022, II.A.6.3.1, second paragraph, first sentence.
In T 1473/19 the board noted that on the other hand that there is also a significant body of case law according to which the description and the drawings should only be used to interpret claim features which are ambiguous; unambiguous terms in the claims should be interpreted without taking the description and the drawings into account and quoted as example T 197/10, Reasons 2.3 and T 1514/14, Reasons 12.
It has also been stated that, for the purposes of assessing compliance with Art 123(2), the description and the drawings should not even be consulted in the case of ambiguous claim features, cf. T 1127/16, to which the appellant referred, Reasons 2.6.1.
In T 1473/19 the board disagreed with the statements in T 1279/04, and hence with T 30/17.
In T 1473/19, the board held that the main rationale underlying T 1279/04, Reasons 3, seems to be that there is a difference between the subject-matter of a patent claim, which is determined in proceedings before the EPO and assessed under Art 54(2), 56, 83 and 123(2), and its extent of protection, which is assessed under Art 123(3) and in national infringement proceedings.
While in T 1473/19, the board acknowledged a difference, it did not consider this difference a convincing reason not to apply Art 69 and the Protocol when determining the claimed subject-matter in proceedings before the EPO. As a remark, the board noted that determining a patent claim’s subject matter, i.e. establishing the meaning of the claimed features, is not distinguishable from interpreting that claim and its features. Understood this way, it is always necessary to interpret a patent claim in the proceedings before the EPO.
In T 1473/19, the board found that
- Art 69 in conjunction with Article 1 of the Protocol thereto can and should be relied on when interpreting claims and determining the claimed subject-matter in proceedings before the EPO, including for the purpose of assessing compliance with Article 123(2), cf. Reasons 3.1-3.15.
The board however added that
- Although Art 69(1), second sentence, requires that generally account be taken of the description and the drawings when interpreting a claim, the primacy of the claims according to Art 69(1), first sentence, limits the extent to which the meaning of a certain claim feature may be affected by the description and the drawings. Cf. Reasons 3.16-3.16.2.
The board concluded that
- Claim interpretation is overall a question of law which must as such ultimately be answered by the deciding body, and not by linguistic or technical experts. It does, however, involve the appraisal of linguistic and technical facts which may be supported by evidence submitted by the parties, cf. Reasons 3.17.
Art 123(3) and Art 69
In T 2475/19 the board considered that, in order to examine the extent of protection of an amended claim in opposition, Art 69 was applicable.
From T 1473/19, the reader learns that there are different views in the case law of the technical boards of appeal on the extent to which Art 69 and the Protocol should be applied when interpreting patent claims.
While these provisions have in some decisions been considered to be generally applicable, other decisions restrict their application in proceedings before the EPO to determining the extent of protection under Art 123(3).
Both T 2475/18 and T 1473/19 refer to G 2/88, OJ 1990, 093, in which the EBA stated that, for the purpose of assessing compliance with Art 123(3), “[d]etermination of the extent of protection has to be carried out in accordance with Art 69(1) and its Protocol, which provides a guide to the manner in which the technical features of the claim are to be interpreted”, cf. Reasons 4.
It can therefore be considered that it is established case law that when it comes to examine the extent of protection of an amended claim in opposition, Art 69 and its Protocol is applicable.
Although T 2475/18 does not consider Art 69 and its Protocol when it comes to deciding whether Art 123(2) is infringed or not, the reference to T 30/17 allows the conclusion that this board considers that Art 69 and its Protocol should not be applied when determining added matter under Art 123(2). This is also in line with T 1279/04.
On the other hand, Art 69 and its Protocol plays an important role when it comes to appreciate the extension of protection under Art 123(2). This is clearly explained in G 2/88.
According to T 1473/19, Art 69 and its Protocol is always to be used, albeit with some reservations, when deciding on added matter. This is made clear by the fact that the board in T 1473/19 does not agree with T 1279/04.
It is not really apparent why Art 69 and its Protocol should necessarily play a role when determining the presence of added subject-matter under Art 123(2).
Wanting to always interpret the claims in the light of the description is the usual way to deal with claims at the German Federal Court (BGH).
It is debatable whether this approach should be taken over by the EPO, even with the proviso expressed in T 1473/19 that the primacy of the claims limits the extent to which the meaning of a certain claim feature may be affected by the description and the drawings.
Diverging case law?
In view of the above, it could be inferred that we are in presence of diverging case law.
It would thus be interesting to hear the EBA on the following questions:
- Should Art 69 and its protocol exclusively be used when determining the extent of protection under Art 123(3)?
- Can Art 69 and its protocol be used when determining whether a claim contains added subject-matter under Art 123(2)?
- If the answer to question 2 is positive, which conditions should apply?
Question 1 has already been answered in G 2/88. It only has the purpose to make the situation perfectly clear and dispel any possible doubts.
In view of the very coherent line of case law established by the EBA with respect to novelty, added subject-matter and priority, Question 2 should be answered by the negative.
It is by no means my intention to restart the discussion on the adaptation of the description in order for it to support the claims.
The above considerations do however show that with a rather “flexible” or even no adaptation of the description to the claims, we could end up with problems when it comes to novelty, added subject-matter or validity of the priority. This Pandora’s box should not be opened and the present case law of the EBA in all those points should not be “dynamically” interpreted.
It might please some users of the system when they are proprietors, but would make life much more difficult when they are opponents or third parties.
This would however not withhold national courts to have their own interpretation and application of Art 69 and its Protocol and to devise their own doctrine of equivalents.