2.3. Referral by a board of appeal
2.3.7 Point of law of fundamental importance
The requirement that the referred question must either concern a lack of uniform application of the law by the boards or a point of law of fundamental importance concerns both referrals by a board and referrals by the President (see in this chapter V.B.2.4.1).
G 1/12 (OJ 2014, A114) concerned the correction of errors regarding the identity of the appellant and, in this context, the admissibility of an appeal. The Enlarged Board held that the referred question related to a "point of law of fundamental importance" because it was relevant to a large number of similar cases (see also T 271/85 date: 1988-03-09, OJ 1988, 341, T 1242/04, OJ 2007, 421 and T 1676/08: "a substantial number of similar cases") and was therefore of great interest not only to the parties to the specific appeal proceedings in question (see also T 590/18 of 4 July 2018 date: 2018-07-04). Settling this point of law was important not only to the users of the European patent system but also to the boards of appeal and the department of first instance in examination and opposition proceedings. A minority of the members of the Enlarged Board disagreed and considered the referral inadmissible. According to the minority, the majority's view implied that "importance" within the meaning of Art. 112 EPC was nothing more than mere relevance. The number of cases affected, however, was neither a suitable nor an appropriate criterion for establishing the admissibility of a referral. In G 1/13 (OJ 2015, A42), the Enlarged Board confirmed the view of the majority in G 1/12.
In T 26/88 (OJ 1991, 30) the board held that a question was not sufficiently important when the legal framework upon which the question was based (here: R. 58(5) EPC 1973) had changed in the interim and the question was therefore unlikely to arise again very often. Similarly, in T 2459/12, the board stated that a question regarding a point of law the answer to which would affect only a relatively small number of applicants for a limited period of time, after which it would become obsolete (here: due to an amendment to R. 164 EPC), was not a question relating to a point of law of fundamental importance.
The lack of case law on a particular issue is in itself not a sufficient reason to refer a question to the Enlarged Board (T 998/99). In G 1/19 the Enlarged Board held that the requirement of fundamental importance was fulfilled despite the small number of board decisions in the field of the application in suit. It added that in an unknown number of cases, the issues at play in the underlying appeal had been avoided through claim drafting techniques; the referred questions could also be pertinent for these cases.
In J 5/81 (OJ 1982, 155) the appellant requested the referral of a question which the board considered an important point of law. The board refused the appellant's request regardless, as the question could be answered by reference to the EPC without doubt (see also, for example, J 14/91, OJ 1993, 479; T 1196/08; T 1676/08; T 2477/12). In T 39/05, the board already denied the existence of an important point of law if a question could be answered by reference to the EPC without doubt.
In J 10/15 the Legal Board was of the opinion that the legal situation in the case in hand was clearly to be derived from the EPC and the PCT, so that there was no question of law of fundamental importance which could justify a referral to the Enlarged Board of Appeal.
- T 439/22
Abstract
In T 439/22 the interpretation of the term "gathered sheet" in claim 1 was decisive to assess novelty. In particular, the prior-art document D1 disclosed – in addition to all other features of the claim – a tobacco sheet spirally wound. The board stated that a skilled person in the current technical field would understand the term "gathered sheet", when read in isolation, as defining a sheet folded along lines to occupy a tridimensional space. Accordingly, when assigning this usual meaning to the term, the subject-matter of claim 1 would have to be regarded as novel. However, if the same term was read in a broader but still technically meaningful manner in view of the definition in paragraph [0035] of the description, the subject-matter of claim 1 would lack novelty. Said paragraph [0035] establishes that "the term "gathered" denotes that the sheet of tobacco material is convoluted, folded, or otherwise compressed or constricted substantially transversely to the cylindrical axis of the rod."
The board examined the case law of the boards and concluded that it was divergent on the following questions, which were all decisive for the case in hand:
- legal basis for construing patent claims
- whether it is a prerequisite for taking the figures and description into account when construing a patent claim, that the claim wording, when read in isolation, be found to be unclear or ambiguous
- extent to which a patent can serve as its own dictionary
According to the board, a decision of the Enlarged Board of Appeal was also required because a point of law of fundamental importance had arisen, since claim construction by the EPO had to be seen within the greater context of the patent protection system as a whole. To provide an overview on claim interpretation in validity and enforcement proceedings, the board took into account decisions of national courts in France, Germany and United Kingdom as well as two recent decisions of the Court of Appeal of the Unified Patent Court (Nanostring v 10x Genomics, UPC CoA 335/2023, App 576355/2023 of 26 February 2024; VusionGroup v Hanshow (APL 8/2024, ORD 17447/2024) of 13 May 2024).
The board concluded that, in order to come to a decision in the case at hand, three questions first had to be answered, both to ensure the uniform application of the law and because a point of law of fundamental importance had arisen. The board thus referred the following questions to the Enlarged Board (referral pending under G 1/24 – Heated aerosol):
1. Is Art. 69(1), second sentence EPC and Art. 1 of the Protocol on the Interpretation of Article 69 EPC to be applied to the interpretation of patent claims when assessing the patentability of an invention under Art. 52 to 57 EPC? [see points 3.2, 4.2 and 6.1 of the Reasons]
2. May the description and figures be consulted when interpreting the claims to assess patentability and, if so, may this be done generally or only if the person skilled in the art finds a claim to be unclear or ambiguous when read in isolation? [see points 3.3, 4.3 and 6.2 of the Reasons]
3. May a definition or similar information on a term used in the claims which is explicitly given in the description be disregarded when interpreting the claims to assess patentability and, if so, under what conditions? [see points 3.4, 4.4 and 6.3 of the Reasons]