1.3.9 Claim interpretation when assessing compliance with Article 123(2) EPC

Catchword:

To assess whether an amended patent claim contains added subject-matter under Article 123(2) EPC, the claimed subject-matter must first be determined by interpreting the claim from the perspective of the person skilled in the art. In a second step, it must be assessed whether that subject-matter is disclosed in the application as filed (Reasons 1.3.8 to 1.3.10).

Catchword: 

1.) Article 69 EPC 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) EPC (Reasons 3.1-3.15).  2.) Although Article 69(1), second sentence, EPC requires that generally account be taken of the description and the drawings when interpreting a claim, the primacy of the claims according to Article 69(1), first sentence, EPC limits the extent to which the meaning of a certain claim feature may be affected by the description and the drawings (Reasons 3.16-3.16.2).  3.) 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 (Reasons 3.17).

Abstract

In T 566/20 the parties disagreed on the interpretation of the feature "the position information in association with the serial number information output from the position control device".

The appellant (opponent) submitted that the position control device could output the serial number information, possibly with the position information. In their opinion, this interpretation was grammatically correct, made technical sense and was not disclosed in the application as originally filed.

In the respondent's view, it was apparent from the claim that the output from the position control device concerned the position information in association with the serial number information. The respondent also noted that this interpretation was in accordance with the disclosure of the application as filed.

The board concurred with the appellant that outputting both the position information and the associated serial number information from the position control device was technically sensible. It further agreed with the appellant that the fact that the claim did not include a step of receiving serial number information did not necessarily mean that the position control device did not receive this information. Outputting both the position information and the serial number information allowed the vision measuring system to match position information with image information by unambiguously correlating serial number information associated with, or included in, each of them. This interpretation did not appear to give rise to incompatibilities with the remaining features of the claim.

Moreover, the board endorsed the view that a patent proprietor would be awarded an unwarranted advantage if it were allowed to restrict the claimed subject-matter by discarding at will technically reasonable interpretations in view of the description (see T 1127/16 and T 169/20). Therefore, the fact that the description and drawings support one interpretation of an ambiguous feature was not sufficient for other interpretations of the ambiguous feature that are technically reasonable in the context of the claim to be discarded.