c) Generally accepted meaning of a term in the claims versus definition in the description 

In T 177/08, with reference to Art. 123(3) EPC, the board referred to Art. 69(1), second sentence, EPC, which provides that the description and the drawings are to be used to interpret the claims. The board said that it had therefore to be decided whether said interpretation of the claims by the content of the description was limited to cases where the claims were in need of interpretation, e.g. because of functional or unclear features, or whether it also applied to the case at issue, where a well-known and generally accepted meaning of a term was overthrown and replaced by a new definition given in the description. The board was of the opinion that the second sentence of Art. 69 EPC did not apply to cases where an unambiguous and generally accepted definition of a term figuring in the claims was to be superseded by a different definition found in the description. If it was intended that a term which was in no need of any interpretation be given a new meaning, then the definition for this new meaning had to be put into the claims. Third parties could not be expected to check every single term of the claims for a potentially different meaning that might be hidden somewhere in the description.

In T 1172/08 the board stated that claim 1 as granted and claim 1 of the main request, when read on their own, provided protection for different subject-matter. The patent proprietor agreed that normally such a shift in the extent of protection would not be allowable. It argued, however, that the case at issue was very particular because the claims as granted did not embrace the subject-matter of the only example of the patent specification. The board had no doubts and the parties did not dispute that dendritic cells and monocytes were different cell types characterised by different features. Reading the patent proprietor's interpretation into claim 1 would require the skilled reader to completely ignore the wording of granted claim 1, which per se was not technically meaningless, with the consequence that the wording of claim 1 would merely serve as an empty shell. This was clearly not in the sense of Art. 69 EPC nor in the sense of the protocol on its interpretation. Moreover, the interest of third parties in legal certainty would be completely ignored, if the patent proprietor's interpretation were found to be acceptable.

In T 2284/09 the appellant (patent proprietor) had relied upon decision T 108/91 (OJ 1994, 228), according to which, in the case of inconsistency between the claim and the totality of the disclosure, it was permissible to refer to the description and, pursuant to Art. 69(1) EPC, to rely on the disclosure of the description to amend the claim. T 108/91 was however not applicable in the case at issue, since there was no inconsistency between the claim of the granted patent and the description. Furthermore decision G 1/93 (OJ 1994, 541) ruled that in the case of a non-disclosed limitation being introduced during examination proceedings (as was the case here), it was not permissible to remove it when so doing would extend the scope of protection. In G 1/93 the role of Art. 69(1) EPC was also considered and it was concluded that the description was to be used for assessing in particular sufficiency of disclosure and in determining the scope of protection conferred by the claims. However, there was no finding in G 1/93 that supported the position of the appellant that the description might be used as a repository from which amendments to the claims could be derived even if such amendments would contravene Art. 123(3) EPC. See also T 195/09, in which the board stated that T 108/91 had been overruled in this regard by G 1/93.

In T 1736/09 the board emphasised that, for the purpose of examination under Art. 123(3) EPC it was irrelevant whether the granted patent met the requirements of Art. 123(2) EPC or Art. 76(1) EPC. See also T 2186/12.

In T 1896/11 the appellant submitted that, taking Art. 69 EPC into account, the description had to be used to interpret the claims; since the protection conferred by claim 5 of the patent as granted necessarily extended to what was stated in the description, claim 5 could be corrected to reflect the description without infringing Art. 123(3) EPC. However, the board held that, in the case at issue, the description could not be used to give a different meaning to a claimed method step which in itself imparted a clear and credible technical teaching to the skilled reader. Otherwise third parties could not rely on what the claim actually stated. In order to determine whether the claimed method step in itself imparted a clear, credible technical teaching, it was necessary to examine "whether (a) the step as claimed was in itself meaningful and plausible from a technical point of view, and (b) whether there was, prima facie, any inherent incompatibility with the remaining features of the claim" (see T 1202/07). In the case in hand, the relevant feature was meaningful and plausible from a technical point of view. This approach was confirmed e.g. in T 626/16.

In T 131/15, however, the board highlighted that, in determining whether the requirements of Art. 123(3) EPC 1973 were met, it was not sufficient to look only at the claims in isolation. The approach to be followed was set out in G 2/88 (OJ 1990, 93) with reference to Art. 69(1) EPC 1973 and its Protocol. In the light of these principles, the board came to the following conclusion: Where an expression in a granted claim, taken literally and in isolation, would have the effect of excluding all of the disclosed embodiments from the scope of protection, but where a definition of the expression may be derived from the patent itself which would locate (at least some of) the disclosed embodiments within the ambit of the claim, and provided this definition was not manifestly unreasonable, having regard to the normal meaning of the words used in the expression, then in judging compliance with the requirements of Art. 123(3) EPC, the scope of protection should normally be considered to include at least that which would fall within the terms of the claim understood according to this definition.