3. Clarity of claims
3.1. Introduction and general principles
Claims lack clarity if the exact distinctions which delimit the scope of protection cannot be learnt from them (T 165/84, T 6/01). The claims per se must be free of contradiction (see T 2/80, OJ 1981, 431). They must be clear in themselves when read by the person skilled in the art, without any reference to the content of the description (T 2/80; T 1129/97, OJ 2001, 273; T 2006/09; T 1253/11; T 355/14). The Enlarged Board held in G 1/04 (OJ 2006, 334) that the meaning of the essential features should be clear for the person skilled in the art from the wording of the claim alone (see also T 342/03, T 2091/11, T 630/14, T 1140/14, T 1957/14). The description is taken into account for the purposes of interpreting the claims and has in some cases also been considered when determining clarity and conciseness (see in this chapter II.A.6.3.).
In the key decision T 728/98 (OJ 2001, 319) the board held that it followed from the requirement of legal certainty that a claim could not be considered clear within the meaning of Art. 84 EPC 1973 if it comprised an unclear technical feature (here "substantially pure") for which no unequivocal generally accepted meaning existed in the relevant art. This applied all the more if the unclear feature was essential for delimiting the subject-matter claimed from the prior art (see also T 1399/11, T 1702/15). Likewise in T 226/98 (OJ 2002, 498) the board held that the feature "as a pharmaceutical product" for defining a pharmaceutical standard of purity in a claim related to a product as such (here, famotidine form "B"), rendered said claim unclear in the absence of a generally accepted quantitative definition for the purported standard of purity.
In T 586/97 the main claim was directed to an aerosol composition comprising a propellant and an active ingredient which was not defined. The board held that, when an essential ingredient comprised in a chemical composition is open to be labelled arbitrarily "active ingredient" or not, the meaning of that feature would be variable. Leaving the public in doubt as to which compositions are covered by the claim would be at variance with the principle of legal certainty. Therefore, the claim at issue failed to meet the requirement of clarity imposed by Art. 84 EPC 1973. See also T 642/05, T 134/10.
In T 1045/92 the claims concerned "a two-pack type curable composition comprising [...]". In the board's view "a two-pack curable composition" was an item of commerce as familiar to readers skilled in the polymer art as everyday articles were to the public at large. The claim was therefore clear.
In decisions T 1129/97 (OJ 2001, 273) and T 274/98 the board emphasised that, to satisfy the clarity requirement, the group of compounds/ingredients according to the claim had to be defined in such a way that the skilled person could clearly distinguish compounds/ingredients that belonged to the claimed group from those that did not (see also T 425/98 regarding the expression "consisting of a major amount of").
In T 268/13 the board concluded that a claim to a "method for producing a [...] decorative strip having a [...] structure consisting of a text or graphic symbol [...]" satisfied the requirements of Art. 84 EPC 1973. Although it was impossible to give an entirely general, universally applicable definition of what constituted a symbol, in the case in hand it would be clear whether or not a particular character was a symbol in the given cultural, linguistic or technical context. The claim therefore presented neither somebody wanting to avoid infringing the patent nor a court deciding on infringement with an impossible task.
In T 1957/14 the board was not persuaded by the appellant's argument that deposited material serves as a surrogate for the description of a sequence, i.e. as an alternative to structural information. In the board's opinion, relying on deposited inbred line material for the definition of the essential features of the invention and requiring it to be analysed in order to identify the relevant alleles was at odds with the principle that, generally, the meaning of a claim, including its essential features, should be clear for the person skilled in the art from the wording of the claim alone.
In T 1845/11 the board concluded that the term "Asian race" was not clear. Clearly defined objective criteria for patient assignment into racial groups were not available to the skilled person.
In T 1170/16 it was held that "useful for" in the expression "a liquid absorbent structure useful for absorbent articles" of claim 1 resulted in a lack of clarity. "Useful for" included an element of value with respect to the features it linked. In claim 1 this benefit was not defined and so the reader was left in the dark as to how the structure was useful for the absorbent articles. The board did not accept that "useful for" was synonymous with "for", meaning "suitable for". It had an effect going beyond mere suitability.
In T 651/05 the board found that the introduction of vague terms created a lack of clarity due to different but equally valid interpretations (see also T 621/03, T 127/04). In T 1534/10 a claim contained the feature "that the data carrier (1) is constructed in a multi-layered manner as a laminate and contains at least two films (4, 5) which are integrated as a cover film (4) or as a core film (5) into the layer construction of the laminated data carrier". The board considered this wording ambiguous because it combined a plural form ("at least two films (4, 5)") with a singular form ("as a cover film (4) or as a core film (5)"), making it unclear whether the "at least two films" were each either a cover film or a core film, or whether together they formed a new film that was then either a cover film or a core film.
Where, on one of several possible constructions of a vaguely formulated claim, part of the subject-matter claimed is not sufficiently described to be carried out, the claim is open to objection under Art. 100(b) EPC 1973 (T 1404/05, see also chapter II.C.8.1. "Art. 83 EPC and support from the description").
In T 762/90 a lack of clarity was found in the use of a trade mark designating a whole series of products which differed from one another depending on phases in their industrial development. Moreover, the board expressed doubts about the use of such a designation, since it was uncertain whether the meaning of the trade mark would remain unaltered up to the end of the patent term (see also T 939/92, T 270/11; see also chapter II.E.1.7.3 e) "Drafting of disclaimers – clarity"). Similarly, in T 480/98 the board considered that a trade mark product referred to in the characterising portion of claim 1 did not have a clear technical meaning, in that it could refer to a plurality of products having different compositions and properties. In consequence there was a lack of clarity, and the claim was not allowable. According to the board in T 623/91 the exclusion of a composition by reference to the trade mark or trade designation would not introduce uncertainty and therefore not offend against Art. 84 EPC 1973, as changes in the range of chemical composition would not be likely without a corresponding change in the trade name or trade mark.
The preamble of claim 2 of the application in T 363/99 contained a reference to a German patent specification. The board considered this to be a violation of Art. 84, second sentence, EPC 1973 since it was impossible to establish the scope of the matter for which protection was sought without consulting the reference document mentioned. The fact that the indication of the publication number of the reference document provided the most concise definition of the matter for which protection was sought (Art. 84 EPC 1973) was irrelevant by comparison. When formulating a patent claim, the form that was objectively more precise always had to be chosen (T 68/85, OJ 1987, 228).
Complexity as such is not equivalent to a lack of clarity – clarity under Art. 84 EPC is not at stake in a case of mere complexity of a claim provided the subject-matter for which the protection is sought and the scope thereof are clear and unambiguous for a person skilled in the art, either per se or in the light of the description (see T 574/96 re Art. 84 EPC 1973). In T 1020/98 (OJ 2003, 533) the board confirmed that compliance with the clarity requirement of Art. 84 EPC 1973 was not dependent on the time required to establish whether a given compound was covered by the product claim. The clarity requirement was not a basis for objecting to the complexity of a claim. Clarity within the meaning of that article merely required the claims to define the subject-matter for which protection was sought clearly and unambiguously for the skilled person, if necessary in the light of the description.
In T 75/09 the board held that where higher ranking requests are refused because a feature common to all requests does not meet the requirements of Art. 84 EPC, all lower ranking requests retaining this feature have to be refused for the same reason.
In T 765/15 the board pointed out that claims 1 and 2 contradicted each other, although claim 2 depended on claim 1. As a consequence, the claim set was unclear according to Art. 84 EPC 1973.
In T 2574/16 the examining division had found the method of claim 1 to be unclear in view of an example disclosed in the description. The board noted that the claim did encompass elaborate simulations going beyond any of the examples disclosed in the application as filed. But this in itself was not a problem of lack of clarity (or insufficiency of disclosure). In fact, it was normal for a claim to define the scope of protection in terms that positively define the essential features of the invention. Any particular embodiment falling within the scope of the claim could have further characteristics not mentioned in the claim or disclosed in the application (and could even constitute a patentable further development).
- T 1099/21
Catchword:
Any unclarity that may arise from an ambiguity in an application as filed is to the detriment of a patent proprietor, who is ultimately responsible for the drafting of the application as filed and its claims. The fact that a feature in the application as filed is unclear cannot therefore justify or excuse the complete deletion of the unclear feature or its replacement by another feature if this results in an extension beyond the content of the application as filed. What prompted a patent proprietor to make a particular amendment to the claims cannot have any influence on the outcome of the assessment of the ground for opposition under Article 100(c) EPC (point 8 of the Reasons).
- T 1526/22
Abstract
In T 1526/22 the application related to a method (and a corresponding apparatus) for estimating a "state" of an ego vehicle, for use in a motor vehicle driver assistance system for the ego vehicle. The examining division had objected that claims 1 and 12 failed to meet the requirements of Art. 84 EPC for two reasons:
(1) the wording "the first state and the second state each include at least one local object attribute describing a local object located in the vicinity of the ego vehicle, wherein the local object is a local vehicle" did not allow to unambiguously derive the meaning of an attribute describing a local object, for example whether it was limited or not to a colour of said local vehicle; and
(2) the wording "for a motor vehicle driver assistance for an ego vehicle" suggested that an effect supporting motor vehicle assistance was to be produced, which was however not apparent from the wording of the claim.
In both cases, it was said that claims 1 and 12 had to be limited in order for the claimed subject-matter to be in agreement with the effect and problem argued by the appellant. Reference was made in that respect to the Guidelines F-IV, 4.5.1.
As regards (1) the board considered the recited feature to be broad but not unclear: "at least one local object attribute" could be any attribute of the local vehicle that was suitable for use by a driver assistance system. It could be, for instance, the local vehicle's position or velocity or even its colour (e.g. as it could be relevant for a classification of that vehicle).
As regards (2) the board interpreted the wording of claim 1 "an apparatus for a motor vehicle driver assistance system for an ego vehicle" as meaning an apparatus suitable for a motor vehicle driver assistance system for an ego vehicle, as is usual for a purpose feature in an apparatus claim in the form "apparatus for ...". Claim 1 did not require the claimed apparatus to be configured to provide the output of the state estimator as input to a driver assistance system.
Claim 12 was directed to "a method for estimating a state of an ego vehicle, the method being implemented on a compute module, the state being for use in a motor vehicle driver assistance system for the ego vehicle". The board noted that last statement appeared to define an intended use of the calculated state obtained by the claimed method. This was not a purpose feature of the kind "method for...", which could in certain circumstances be considered to imply a corresponding method step, but rather of the kind "data for...". The claim did not specify any method step in which the calculated state would be actually used for that purpose, nor did the claim comprise any other feature that would establish that said use was part of the claimed method, be it explicitly or implicitly. The board understood this feature as merely requiring the calculated state to be suitable for use in a motor vehicle driver assistance system for the ego vehicle, in which case there would be no clarity problem. However, in view of the other objections, this issue was left open.
Moreover, the board observed that the examining division had not referred to any specific passage of the description in support of its objections. Hence, the passage of the Guidelines F-IV, 4.5.1 "Objections arising from missing essential features", cited by the examining division, did not support the raised objections.
However, the board raised further objections and concluded that claims 1 and 12 lacked clarity under Art. 84 EPC. In particular, the board noted that according to the third and fourth embodiments, reflected in dependent claim 5, the prediction model and the update model were "combined into a combined ANN". In these embodiments, the combined ANN carried out an estimation of the second state taking as input the first state and the measurements of the second state but without necessarily performing separate prediction and update calculations, as suggested by claim 1. This cast doubt as to how the features of claim 1 related to the prediction and update elements were to be interpreted, rendering claim 1 unclear. Similar considerations applied to claim 12.
- T 56/21
Abstract
In T 56/21 the board addressed the question whether Art. 84 EPC provides a legal basis for (i) objecting to an inconsistency between what is disclosed as the invention in the description (and/or drawings, if any) and the subject-matter of the claims, the inconsistency being that the description (or any drawing) contains subject-matter which is not claimed, and (ii) requiring removal of this inconsistency by way of amendment of the description (hereinafter: "adaptation of the description").
As the appeal concerned ex parte proceedings, the board dealt with the interpretation of Art. 84 EPC for the purpose of its application in examination proceedings. The board analysed the function and relationship of the claims and the description, the relationship between the assessment of patentability and the determination of the extent of protection as well as the requirements of support by the description and clarity in Art. 84 EPC.
On adaptation of the description, the board came to the following conclusions:
(a) Art. 84 and R. 43 EPC set forth requirements for the claims, not for the description.
(b) It is the purpose of the assessment of Art. 84 EPC as part of the examination of patentability to arrive at a definition of the patentable subject-matter in terms of distinctive technical features distinguishing it from the prior art.
(c) Art. 69(1) EPC and the Protocol on the Interpretation of Art. 69 EPC are not concerned with the definition of the subject-matter according to Art. 84, first sentence, EPC, or the assessment of patentability in examination before the EPO but with the extent of protection in the context of infringement proceedings in the contracting states. Art. 69 EPC and its Protocol are hence not applicable in grant proceedings before the EPO.
(d) The requirements of Art. 84 EPC and R. 43 EPC are to be assessed separately and independently of considerations of extent of protection when examining a patent application.
(e) In examination, future legal certainty is best served by a strict definitional approach which ensures that allowable claims per se provide an unambiguous definition of the subject-matter meeting the requirements for patentability.
(f) Adapting the description to match the more limited subject-matter claimed does not improve legal certainty but reduces the reservoir of technical information in the granted patent. This may have unwarranted consequences in post-grant proceedings and may encroach on the competence of national courts and legislators.
(g) R. 48 EPC is not concerned with the adaptation of the description, but with the avoidance of expressions which are contrary to public morality or public order, or certain disparaging or irrelevant statements in the publication of an application.
The board held that in examination of a patent application, neither Art. 84 nor R. 42, 43 and 48 EPC provide a legal basis for requiring that the description be adapted to match allowable claims of more limited subject-matter. Within the limits of Art. 123 EPC, an applicant may, however, amend the description of its own volition.
In the case at hand the description included a passage entitled "SPECIFIC EMBODIMENTS", which contained claim-like clauses. Those clauses included subject-matter which was not claimed. The board set aside the (refusal) decision under appeal and the case was remitted to the examining division with the order to grant a patent based on the main request on file.
- T 1152/21
Abstract
In T 1152/21 the board concluded that claim 1 of auxiliary requests 9b and 10a did not meet the requirements of Art. 84 EPC.
Claim 1 of auxiliary request 9b included the term "cooling to an appropriate temperature". The board found that the skilled person could not assess whether a particular temperature was an "appropriate temperature", since the wording of the claim did not allow them to determine the conditions under which a temperature was an "appropriate temperature". Therefore, the claim was not clear.
The patent proprietor (appellant) had submitted that the skilled person was very familiar with heating and cooling steps, which were inherent to any (re)crystallisation process. It was a routine task for the skilled person to determine said appropriate temperature by reasonable trial-and-error experiments. Hence, the feature "appropriate temperature" was a functional feature related to a process step which could easily be performed in order to obtain the desired result. The board did not agree. It held that the patent proprietor's submission was relevant for sufficiency of disclosure rather than for the clarity of the claim. The relevant issue was what was covered by claim 1 of auxiliary request 9b, not whether the skilled person could reproduce the claimed method.
Auxiliary request 10a included in claim 1 the following terms: "heating to about 70°C", "heating at about 70°C", "heating the organic layer to about 120°C", "cooling to about 80°C", "maintaining the mixture at about 80°C for about 3 hours" and "gradually cooling to about 10°C".
The board noted that the term "about" in the context of said claim was associated with a specific temperature or a specific time. It could be that the term "about" was intended to cover measurement errors. However, measurement errors were covered for any value of any technical parameter to be measured and given in any claim (without the need for the term "about") since patents were in the field of technology, not mathematics, and a value could only be as precise as it could be measured according to the general technological convention. Thus, following this interpretation, the term "about" was superfluous and claim 1 was not concise, contrary to what was required by Art. 84 EPC. Alternatively, the term "about" could be intended to denote a range broader than the measurement error range. Following this second interpretation, it could not be determined how broad the range could be in claim 1 and what the exact limits of this range were. In this case, the term "about" in said claim was not clear, again contrary to what was required by Art. 84 EPC.
The patent proprietor had submitted that the term "about" was clear in light of the description of the patent since paragraph [0020] gave a clear definition of the term. According to the board, the claims have to be clear as such, i.e. without taking the description into account to interpret any unclear term. Even if it were accepted that the description could be consulted in the context of Art. 84 EPC, paragraph [0020] of the patent read as follows: "[...], the term "about" means within a statistically meaningful range of a value, such as a stated concentration range, time frame, molecular weight, particle size, temperature or pH. Such a range can be within an order of magnitude, typically within 20%, more typically within 10%, and even more typically within 5% of the indicated value or range". In the board's view, the term "statistically meaningful range" did not clearly define a range and for that reason was unclear. Even if it were accepted that, as submitted by the patent proprietor, the term "statistically meaningful range" was specified by relative variations in percent, said term would still be unclear since the following sentence contained various different percentages ("typically within 20%, more typically within 10%, and even more typically within 5% of the indicated value or range"). Contrary to the patent proprietor's submission that the skilled person would choose the broadest range, there was no teaching in this following sentence to choose the percentage within 20% of the indicated value, in view of the lower preference of the term "typically" compared with the two other terms "more typically" and "even more typically".
The patent proprietor further submitted that the term "about" was to be considered clear in light of the Guidelines F-IV, 4.7.1 – March 2021 version. The board pointed out that this chapter related to the interpretation of terms such as "about", not to the assessment of the clarity of such terms. Thus, the board found that the patent proprietor's submission was not convincing.
- 2023 compilation “Abstracts of decisions”