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T 675/22 – No application of Art 69 when interpreting a claim – Disrespectful behaviour of a representative

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The application relates to a processing apparatus, image sensor and system.

Brief outline of the case

The application was refused for lack of IS and the applicant appealed.

The board confirmed the lack of IS of claim 1 of the MR.

The board did not admit AR 1-3 under Art 13(2) RPBA.

The decision is interesting for two aspects:

  • Application of Art 69
  • Behaviour of the representative towards the board.

The board’s decision on the application of Art 69

The contested decision found the subject-matter of claim 1 not to involve an inventive step starting from the CPA D3 in combination with D1, which was said to disclose the skilled person’s common general knowledge with regard to the “CSI-2 standard”.

A major point of contention between the applicant and the ED was the interpretation of the term “single data bus”. According to the applicant, taking into account Art 69(1), the claims had to be interpreted in light of the description.

In light of this, the applicant referred to various passages of the description, and submitted that a “single data bus” should be understood as a “single data transfer means or interface”, which was “single” in such a way that it could only be used by one sensor at a time.

The board disagreed. According to established case law, a claim should be read and interpreted on its own merits. The board referred to T 223/05, Reasons 3.5; T 1404/05, Reasons 3.6 and T 2764/19, Reasons 3.1.1.

For the skilled person, the term “single data bus” does not mean that the data bus can be used by only one sensor at a time. Rather, a bus can be serial or parallel and a “serial bus” can have multiple lanes. Therefore, a “single data bus” has no meaningful delimiting effect. The board also saw no reason to interpret claim 1 in view of any particular standard, let alone the “CSI-2 standard”, since the claim does not provide for such a limitation.

The board thus agreed with the view expressed in the contested decision that the “data interface 1702” used in the system of D3 corresponds to a “single data bus” within the meaning of claim 1.

As a consequence, the board did not regard specific features which the applicant considered not to be disclosed by D3, as distinguishing features.

Eventually the board decided that claim 1 was lacking IS.

The board’s comments on the representative’s behaviour

At the OP before the board, in particular during the discussion regarding the admittance of the AR, the applicant’s representative requested a break in order to file a divisional application.

When asked for the legal basis of this rather unusual request, he lost his composure. He criticised the board for members for their “destructive approach”, lack of an “open mind” and unwillingness to resolve the issues at hand.

He complained that he had the impression that the board was in a “hurry” and asked the board whether the board members had another “appointment”.

He said that he felt himself as if he were in the “military”, making the German “zum Kotzen” gesture with the index finger pointing towards his open mouth.

He then grabbed his mobile phone to call his secretary to give instructions to file a divisional applications unless the board gave a break.

The board warned the representative that this behaviour in the proceedings was totally disrespectful towards the members of the board and constituted a violation of Art 6 of the Code of Conduct of the Institute of Professional Representatives before the European Patent Office, cf.Official Journal EPO, 2022, A61; “epi Code of Conduct”.

After a break given for the board to deliberate on the admittance of the present AR, the representative had regained his composure and stated that he had meanwhile filed a divisional application. The request for a break to file a divisional application was therefore moot.


Application of Art 69

In many postings on this blog, I showed that there are roughly two lines within the boards.

One set of boards consider that the claim has to be looked at on its own without recourse to the description. A second set of boards consider that the claim has systematically to be interpreted in the light of the description.

It is therefore important that a referral is made to the EBA to clarify the issue, if not by a board, then by the president of the EPO.

Strictly speaking Art 69 is only to be used when determining the scope of protection under Art 123(3) in opposition. No other part of the EPC relies directly or indirectly to Art 69 during procedures before the EPO.

Behaviour of the representative

It is very rare that a representative behaves like the present one before a deciding body of the EPO.

When giving presentations on OP, the first item on my “not to do list” is the following: As you want to obtain a positive decision for your client try not to antagonise the deciding body.

As chair of EDs or ODs I only remember two cases in which the attitude of the representative was, to say the least, incorrect.

One in examination, where the representative having drafted the application could not accept that what he had disclosed was a black box, hence he had a massive problem of sufficiency. One hour in fresh air calmed the representative.

One in opposition where the representative of one of the parties insulted the representatives of the opposite party. It is only the threat of postponement of the OP, and the ensuing costs for his client that led the insulting representative to present very formal excuses to his colleagues.  

Filing a divisional application before an OP

It is a well know tactical move from the side of applicants to file a divisional on the eve of an OP.

As the fees can be paid within a month and the claims filed as well within a month, the divisional can be left to be deemed withdrawn if the result of the OP was positive for the applicant. If the result is negative, there is a chance to continue with the application by paying the fees and filing the claims.

This was alas not really possible in the time when strict time limits were imposed on the filing of divisional applications. This period has luckily come to an end.

However, filing a divisional in the middle of an OP remains curious move.


8 replies on “T 675/22 – No application of Art 69 when interpreting a claim – Disrespectful behaviour of a representative”

Curious Indeedsays:

Filing or attempting to file a divisional application during oral proceedings is curious to say the least. It is beyond me why anyone would rely on the TBA to give the time to file the divisional application when, as you say, the divisional application can be filed without paying any fees the day before. At all of my firms it has always been standard practice to discuss this with the client before the day of the oral proceedings; standard letters should always mention the possibility. Perhaps the representative was agitated because they knew they had left themself in an avoidable situation.

Avatar photoDaniel X. Thomassays:

As I said to Max Drei, it can indeed become stressful for a representative when he realises that he has not managed to convince the board, although it was what he had announced to his client.

Some representatives are, alas, too self-confident. The good thing is that there aren’t many of them.

They seem to forget that the decision is not in their hands, but in that of the deciding body.

Doubting Thomassays:

I understand how the Boards can arrive at the conclusion that the EPO should not, except in very specific circumstances, rely upon the disclosures of the description to interpret the extent of protection afforded by the claims. There is a certain practical sense to adopting that stance, as it would be silly to make examination before the EPO as complicated as litigation before national courts, where much time effort and expert evidence can be required to determine the extent of protection under Art 69 EPC.

However, having taken that position, I have a hard time why, for the sake of determining compliance with the “support” requirement of Art 84 EPC, at least some Boards are OK with:
– interpreting the meaning of disclosures of the description; and
– comparing and contrasting the meaning of each such disclosure (as determined in isolation) to the meaning of the claims (again as determined in isolation).

Is there a justification for this approach (as opposed to approaching interpretation of any part of a patent by reading the claims and the description as a single document)?

Avatar photoDaniel X. Thomassays:

Dear Doubting Thomas,

The present decision illustrates once again one of the two lines of caselaw when it comes to the application of Art 69 in procedures before the EPO.

The present decision agrees with the first line of caselaw, Art 69, yes, but only as an exception. The second one wants to apply Art 69 more or less systematically.

The problem of Art 84 “support” is not new and we have discussed this topic many times.

In T 447/22, the board held that it is a general principle applied throughout the EPC that a term of a claim can be interpreted only in context. The claims do not stand on their own, but together with the description and the drawings they are part of a unitary document, which must be read as a whole. The board referred to. T 556/02, Reasons 5.3; T 1646/12, Reasons 2.1, T 1817/14, Reasons 7.3, and T 169/20, Reasons 1. The extent to which description and drawings can provide an aid to interpret the claims is however subject to certain limitations.

In order to be unitary, the description and the claims have to be coherent. When dealing with “support” under Art 84, the disclosures which do not fall under the subject-matter of the claims have to be “isolated” and marked as such.

If one would follow your argumentation, the description should thus never be adapted at all. This is however not what is foreseen in the EPC as it stands.

Max Dreisays:

Thank you. Daniel, for another entertaining read.

In Germany one ends one’s letters with the ubiquitous polite valedictory formulation mfg (mit freundlichen Grüßen). Accordingly, I laughed out loud when I saw on the EPO Register that the name of the firm of representatives in this case is MFG. The firm surely chooses a different ending, wouldn’t you agree, when it writes to the EPO.

Having said that though, oral proceedings can be, for a representative, quite stressful. Peop.sle under stress have been known to behave irrationally. When it comes to OP’s, always expect the unexpected.

Avatar photoDaniel X. Thomassays:

Thanks for the pun.

MFG is such an expression which to me has no specific meaning. You can end a cease and desist letter with MFG, but there is nothing friendly about it. You find this kind of end sentences in all languages, but beside a standard formulation to politely end a letter, it has no specific meaning at all.

I agree that in OP expect the unexpected. It is the last slide in my presentation about “Do’s and Don’ts in Oral Proceedings before the EPO”.

I have even the cover of a book of Tommy Ungerer which exactly says this. I cannot, alas, bring it in the reply.

It can indeed become stressful for a representative when he realises that he has not managed to convince the board, although it was what he had announced to his client.

It reminds a comment I heard from the former head of the patent department of IBM Germany: Vor Gericht ist es wie auf hoher See, man ist in der Hand Gottes. In court it is like being on the high seas, you are in the hands of God.

Would you start being disrespectful towards any god, should you wish to be on the right side on the last day? 😉

Doubting Thomassays:

Mr Thomas, thank you for drawing my attention to T 447/22, as it is an interesting case.

As you pointed out, the Board in that case concluded that the extent to which description and drawings can provide an aid to interpret the claims is subject to certain limitations. Indeed, at point 13.1 of the Reasons for T 447/20, the Board indicates that:
“only that technically illogical interpretations should be excluded … A claim can thus be interpreted in the light of the description and the drawings to the extent that they contain logical and technical sensible information.

… many decisions of the Boards of Appeal have concluded that a 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 (see, for example, T 431/03, Reasons 2.2.2; T 1597/12, Reasons 3.2.1; T 1249/14, Reasons 1.5). The description cannot be used to give a different meaning to a claim feature which in itself imparts a clear, credible technical teaching to the skilled reader (T 1018/02, Reasons 3.8; T 1391/15, Reasons 3.5). On a similar note, the board in T 197/10 (Reasons 2.3) held that, in the event of a discrepancy between the claims and the description, those elements of the description not reflected in the claims are not, as a rule, to be taken into account for the examination of novelty and inventive step”.

This is not really interpreting the claims in the context of the description, as it means that there can be no recourse to the description for claims that have a technically logical meaning on their own … even if taking account of context provided by the description would lead to the claims being afforded a different meaning.

I am also interested by T 447/20, point 13.6 of the Reasons:
“it must be concluded that the present case is one where the interpretation of a claim in the light of the description reaches its limits. Taking account of the deviant note in paragraph [0030] would mean ignoring the natural reading of claim 1 (see points 10. and 11. above) and disregarding the extensive contextual information provided by the rest of the description (see points 13.2 to 13.4 above). It can only lead to a technically discrepant claim interpretation which the skilled person would be unwilling to adopt and would actually deprive the claims of their intended function”.

This seems to be an example of a Board having no difficulty dealing with a description that has not been fully adapted to the invention described in the claims. Does this not lend credence to the idea that we should trust the courts (and the Boards) not to arrive at the “wrong” claim interpretation simply because the description of a patent has not been strictly adapted to the claims prior to grant?

Avatar photoDaniel X. Thomassays:

Dear Doubting Thomas,

I have prepared two publications about T 447/22. They will be published on Monday 11th.

The first is about claim interpretation in the light of the description, or the limits of it.

The second is about the limits of the adaptation of the description in opposition.

It would have been too much to bring both topics in one single publication and both deserve a detailed approach.

I want to have a further look at those before publication, hence the delay before publication.

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