CASELAW-EPO - reviews of EPO Boards of Appeal decisions

T 640/22 – Pre G 1/24 - Art 69 is not to be applied when it comes to assess Art 123(2)

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EP 3 441 997 B1 relates to a safety switch device for safe activation/deactivation of at least one electric machine.

Brief outline of the case

The opposition was rejected and the opponent appealed.

The board held that claim 1 as granted was infringing Art 123(2). AR1 was not admitted under Art 13(2) RPBA.

The patent was thus revoked.

The OD’s point of view

In the opinion of the OD, the skilled person would not understand claim 1 in any other way than that, in the light of the wording “a minimum distance”, it shows only one minimum distance, namely the minimum distance 4 shown in Figure 3.

The proprietor’s point of view

The proprietor argued that a patent must be read with the will to understanding it.

If the “naked” wording of the claim is taken without any consideration of the description and figures, feature the feature at stake is an empty feature, as any distance between the connection sockets would then be possible.

However, the aim in the patent is to maintain a certain distance between the first and second connection sockets. In the light of this information taken from the description and the figures, it was quite clear that the feature at stake required a minimum distance between two opposing connection sockets, which therefore could not be smaller between other opposing connection sockets. This reasonable understanding of claim 1 had, moreover, been the consensus for many years.

The board’s decision

The Board could not agree with either the OD’s or the proprietor’s view.

In the board’s view, the wording of the feature at stake is clear and unambiguous in itself so that there is no room for interpretation.

It contains the directly understandable, explicit technical teaching that a minimum distance is provided between two opposing first and second connection sockets. This minimum distance between the two opposing first and second connection sockets of the feature at stake must therefore not be less than this minimum distance.

Claim 1 does not say anything, not even implicitly, about the relative arrangement of the further connection sockets of claim 1 in addition to the two first and second connection sockets mentioned in the feature at stake.

Neither Art 69 nor any other provision of the EPC provides a legal basis for attributing a narrower meaning to a clearly defined technical teaching in the claimed version, contrary to its unambiguous wording, with regard to passages in the description or on the basis of the figures. The board referred to  T 1628/21, Reasons 1.1.16, commented in this blog.   

The board added that an application of Art 69 in the sense that a broad claim wording is to interpreted more narrowly in opposition or opposition appeal proceedings with regard to text passages in the description than is justified by the clear wording per se would render the requirement of Art 123(2) largely obsolete.


The present decision shows best that it was high time to have a referral on the application of Art 69 in procedures before the EPO.

As the decision was issued on 03.06.2024, there was no reason for the board to stay the proceedings in view of the referral G 1/24 following decision T 439/22.

The present decision is in line with T 2475/18.

The present decision contradicts T 450/20 and T 1473/19.

The present board was right to make clear that, depending on how the claim can be interpreted, it would render the requirement of Art 123(2) largely obsolete.

It will be interesting to see how the EBA will deal with the link between Art 54(2+3) and Art 123(2), taking into account that the referring decision T 439/22 did purposedly not mention Art 123(2) in the referred questions.

All the decisions quoted here were commented in the present blog, like many other on this topic.

T 640/22

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