EP 3 395 043 B1 relates to a rule-based network-threat detection for encrypted communications.
Brief outline of the case
The patent was revoked for non-compliance with Art 123(2).
The proprietor appealed, but the board confirmed the revocation for non-compliance with Art 123(2). Some AR were not admitted by the board.
The decision is interesting as it links G 1/24 with added matter.
The proprietor’s point of view
The proprietor argued that “routing filtered packets to a proxy system” in the context of claim 1 was to be broadly construed, i.e. it should not be narrowly interpreted as “network-layer routing” only. Rather, it should include any kind of “sending”, “forwarding” or “logging”.
The proprietor further argued that, when applying the conclusions of G 1/24, i.e. in particular that the description and the drawings shall always be “consulted” to interpret a claim, to the present case, the skilled person in the field of data communications would have understood that such “forwarding” was providing a basis for the “routing” action.
In other words, the proprietor argued that, if multiple technically sensible interpretations of a certain claim feature exist, the one which is supported by the description should prevail.
The board’s decision
The board noted first that, even if the Order of the G 1/24 could indeed be extrapolated to the assessment of compliance with Art 123(2), there is no indication in G 1/24 that “consulting” or “referring to” the description and drawings could translate to adopting a claim interpretation which ensures that the disputed feature is originally disclosed and thus necessarily complies with Art 123(2).
Such an approach which inherently assumes that there may be only one “correct” interpretation of a claim feature, namely the one derivable from the original description as its intended meaning.
The board considered that this position is apparently advocated e.g. in T 367/20, Reasons 1.3.9 and 1.3.16 in the event of “mutually exclusive” interpretations, or by the recent decision T 2048/22, Reasons 1.2.1 and 1.2.2 in the case of claim ambiguities, would not lead to an objective assessment of compliance with Art123(2) and thus jeopardise legal certainty.
It would be tantamount to interpreting a claim feature such that, in the end, virtually no violation of Art 123(2) within the meaning of the well-established “gold standard” could arise.
Rather, there is a significant body of case law holding that all technically reasonable interpretations of a disputed claim feature are to be taken into account when assessing compliance with Art 123(2), see e.g. T 945/20, Reasons 2.4; T 470/21, Reasons 2.1; T 2034/21, Reasons 11; T 193/22, Reasons 3.5.
The board added that, in the present case that, even assuming arguendo that the “forwarding” of logged packets, comprising encrypted data, to the proxy device “PD1” constituted a specific instance of the more general “routing filtered packets to a proxy system”, this would still fail to justify the claimed generalisation, which also encompasses, inter alia, network-layer routing of filtered packets not being necessarily logged.
Comments
T 2048/22 is a problematic decision as the board concluded that the term “pores or perforations” in claim 1 as granted created ambiguity since it is unclear whether it expresses two alternative items or the same item, but held, in view of G 1/24, that pores and perforations are indicative of the same entity.
From a semantic point of view, a pore is a very small opening, cavity or depression. A distinction is made between micro-, meso- and macropores. A perforation is a hole in hollow bodies or flat objects. They cannot be considered as synonyms. The ambiguity is undisputable, for this reason aone.
In T 2605/22 commented in the present blog, the conclusion was reached that, an unclear or ambiguous feature can indeed lead to a non-compliance of Art 123(2).
In T 1791/16, Reasons 11, it was held that, If a claim is ambiguous/unclear, all technically reasonable claim interpretations must be considered. If one of those interpretations contains matter that extends beyond the content of the application as originally filed, it must be concluded that added subject-matter is present.
In T 470/21, Reasons 2.1, it was held that, a reasonable interpretation of a claim is to be taken into consideration for the assessment of Art 123(2) but added that Art 69(1) may be used to interpret the scope of protection under Article 123(3) EPC, but it is not used to determine whether the requirements of Art 123(2) are met.
T 367/20, commented in the present blog was taken before G 1/24 was issued and relied on Art 69. It is thus not so relevant when taking into account T 470/21.
The present board is thus to be followed when it comes to the conclusion that in case a claimed feature can have a plurality of interpretations for the skilled person, i.e. in case of an ambiguity, not only the one derivable from the original description is to be taken into account, and thereby exclude other possible interpretations as well derivable for the skilled person.
The gold standard corresponds to what is “directly and unambiguously derivable” from the original disclosure. When a feature allows a plurality of interpretations to be derivable, i.e. it is ambiguous, it cannot be said that the corresponding interpretation is “directly and unambiguously derivable”.
It is doubtful that with G 1/24 the EBA wanted to throw away all thee case law relating to the gold standard, by giving the wording in the description the primacy over the claim.
In the decisions following G 1/24, the position of the boards is abundantly clear: no interpretative summersaults, cf. T 2027/23.
If the applicant/proprietor wants a certain interpretation to be taken into account, he will have to bring it in the claim.
The present decision, and all those of the same kind, are abundantly clear: if the feature to be brought into the claim is ambiguous, then, there is a risk of non-compliance with Art 123(2).
This might make drafting an application more difficult, but it is in the interest of third parties. The interpretation of an ambiguous feature cannot change as the applicant/proprietor thinks fit. It is also not possible to only stick to the one derivable from the original description as its intended meaning. This would boil down to put blinkers on the skilled person.
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