6. Interprétation des revendications

Catchword: 

1. On the limits of claim interpretation in the light of the description (see point 13 of the reasons).  2. In application of decision G 3/14, an objection under Article 84 EPC that a claim is not supported by the description is open to examination in opposition or opposition appeal proceedings only when, and then only to the extent that, the lack of support has been introduced by an amendment to the patent. It must thus be accepted that the removal of an inconsistency between the description and a claim amended in opposition or opposition appeal proceedings is not possible when the inconsistency previously existed in the patent as granted (see point 83 of the reasons).

Catchword: 

1. There is no provision stipulating that examples within the meaning of Rule 42(1)(e) EPC should not be in the form of claim-like clauses, i.e. in the form of one or more independent clauses followed by a number of clauses referring to previous clauses, at the end of or in another part of the description. There is no justification for deleting such examples just because they were drafted as claim-like clauses. They are to be treated like any other part of the description and thus, inter alia, must support the claims (Article 84 EPC). (Reasons 3.4 and 3.5)  2. It is a general and overarching objective, and as such also a "requirement" of the Convention, that authorities, courts and the public interpreting the claims at a later stage should, as far as possible, arrive at the same understanding of the claimed subject-matter as the EPO bodies deciding on the patentability of the same subject-matter. The only tool for achieving this objective is the patent specification as the expression of a unitary legal title. The description, as an integral part of the patent specification, should therefore also serve this overriding objective, i.e. it should provide a common understanding and interpretation of the claims. If the description contains subject-matter which manifestly impedes a common understanding, it is legitimate to insist on its removal under Articles 84 and 94(3) EPC and Rules 42, 48 and 71(1) EPC. (Reasons 5.5.3)  3. The board approves the practice where instead of a direct removal, i.e. the deletion of the subject-matter not covered by the claims, a "removal" by way of an appropriate statement is made, leaving the technical disclosure unaffected. (Reasons 5.7.2)  4. A referral to the Enlarged Board of Appeal whose sole purpose is to correct the Guidelines and which is not necessary either for ensuring a uniform case law within the boards or for the board's decision is not admissible. Such a referral could be perceived as an attempt to encroach on the President's powers under Article 10(2)(a) EPC. (Reasons 8.2.2)

Catchword: 

With regard to the question of compatibility of certain principles of claim interpretation for the purposes of considering novelty or inventive step with Article 69 EPC, reference is made to Reasons 1.1.11 to 1.1.16.  The principle of primacy of the claims seems to exclude the use of the description and drawings for limiting the claims if an interpretation of the claim in the light of common general knowledge already leads to a technically meaningful result. Similarly, the principle, established by case law, according to which "limiting features which are only present in the description and not in the claim cannot be read into a patent claim" is also fully compatible with Article 69 EPC and Article 1 of the Protocol.

Résumé

In T 177/22 the board stated that in order to assess whether the claimed invention is sufficiently disclosed or is novel or inventive, the claimed invention must – to the extent to which this is decisive for the outcome of the case – first be determined by interpreting the claim from the perspective of the person skilled in the art (see T 367/20). When doing this, a board of appeal is not limited to the claim interpretations advanced by the parties but may also adopt a claim interpretation of its own (T 450/20, T 1537/21).

According to the board, the relevant feature of claim 1 as granted was to be interpreted not only in the context of the other features in that claim but also in the context of the description as granted (for recent case law on this matter see T 367/20, referring to the principles of claim interpretation as set out in Art. 69 EPC and Art. 1 of the Protocol on the Interpretation of Article 69 EPC; T 447/22, referring to the general principle under the EPC that claims can be interpreted only in context, which includes the description and the drawings; T 1473/19, referring to G 2/88, applying Art. 69 EPC and the Protocol for interpreting "the technical features of the claim" when assessing extension of the scope of protection under Art. 123(3) EPC; G 6/88 (taken on the same day as G 2/88), where the Enlarged Board (directly) applied Art. 69 EPC and the Protocol "to construe the claim in order to determine its technical features" when assessing novelty; compare also Court of Appeal of the Unified Patent Court, UPC_CoA_335/2023, Grounds 4.d)aa), referring to Art. 69 EPC and the Protocol as well as to G 2/88, and stating that the principles for the interpretation of a patent claim apply equally to the assessment of the infringement and the validity of a European patent; as to the harmonised approach on claim interpretation introduced by the EPC see further G 6/88, referring to Art. 69 EPC and the Protocol on its interpretation as "a mechanism for harmonisation" which provides a "method of interpretation of claims of European patents throughout their life"; T 1473/19, referring to the legitimate interests of the users of the European patent system in a common approach to claim interpretation; T 367/20 and T 438/22, referring to the overarching objective under the EPC that authorities, courts and the public interpreting the claims should, as far as possible, arrive at the same understanding of the claimed subject-matter as the EPO bodies deciding on its patentability; as to the primacy of the claims under Art. 69 EPC and the Protocol see T 1473/19; in regard to the latter compare also Court of Appeal of the Unified Patent Court, UPC_CoA_335/2023, Grounds 4.d)aa), referring to the patent claim as not only the starting point, but the decisive basis for determining its subject-matter and scope of protection).

The board noted that the fact that the patent specification disclosed embodiments which were not encompassed by claim 1 did not result in an insufficient disclosure but in a lack of support by the description under Art. 84 EPC. However, the requirements of Art. 84 EPC play no role in opposition proceedings where the proprietor seeks to have the patent as granted upheld (G 3/14, point 55 of the Reasons).

The respondent (opponent) submitted that a different, broader, claim interpretation had to be adopted for the assessment of novelty and inventive step than for the assessment of sufficiency of disclosure. The board disagreed and stated that the "invention" within the meaning of Art. 54(1) EPC, the "invention" within the meaning of Art. 56 EPC and the "invention" within the meaning of Art. 100(b) EPC (and Art. 83 EPC) all refer to the claimed subject-matter (see T 1473/19 and T 92/21), and a given patent claim's subject-matter must be interpreted and determined in a uniform and consistent manner (see T 1473/19). This excluded interpreting the same claim differently when assessing sufficiency of disclosure on the one hand, and when assessing novelty and inventive step on the other hand. It also presupposed that the same principles of claim interpretation must be applied when assessing compliance with any of these requirements under the EPC.

The board further held that a patent claim must be construed in an objective manner (see T 518/00, referring to the description and the drawings as an aid to interpretation). This prohibited adopting a certain claim interpretation – be it narrow or broad – only because it was, under a certain ground of opposition (or, for that matter, under a certain ground for revocation or in infringement proceedings), (more) detrimental or beneficial to one of the parties.

Résumé

In T 147/22 the respondent (opponent) raised several clarity objections, which were mainly directed to the expression "consisting essentially of" and to the fact that the ingredients cited in claim 1 were associated with a function.

On the first aspect, the board noted that the expression "consisting essentially of" limited the ingredients in the composition of claim 1 to those defined in components (a) to (d), although further non-active ingredients could be present provided they did not materially affect the chemical stability of TAS-102. The respondent had argued that the expression "consisting essentially of" rendered claim 1 unclear because the skilled person would not know which were the compounds that did not impair the stability of TAS-102 in the composition, and the patent did not contain any information in that respect. According to the board, however, the nature and amount of those additional ingredients was strongly limited by the condition that they must not impair TAS-102 stability. Furthermore, the skilled person confronted with a composition containing components (a) to (d) and additional ingredients could easily determine whether or not the additional ingredients impair TAS-102 stability. Testing the chemical stability of active compounds in a composition was standard practice in the field of pharmaceutical formulations. Such tests were illustrated in Test Examples 1 to 5 of the patent for the particular case of TAS-102. Therefore, the skilled person could easily determine by standard comparative tests whether or not a given composition consisted essentially of components (a) to (d).

With regard to the functional definition of the ingredients in claim 1, the board held that the criterion for assessing whether a compound had the function assigned to it was the function (or functions) that the skilled person would assign to that compound in the context of a given formulation. Contrary to the respondent's view, the formulator's intention was irrelevant in that respect. It was undisputed that the functional features "excipient", "disintegrating agent", "binder", "lubricant", "flavouring agent", "colourant" and "taste-masking agent" were standard in the technical field of pharmaceutical formulations. The skilled person would have no difficulty in determining whether a given formulation ingredient fulfils one or more of these functions on the basis of common general knowledge. These were functional features which were generally allowed if the invention could not be defined more precisely without unduly restricting the scope of the invention. Furthermore, in the present case, the main ingredients were not solely defined by functional features. They were further limited by structural features: for instance, the excipient according to component (b) was selected from lactose, sucrose, mannitol and erythritol. In view of common general knowledge and the structural limitations of the functional features, the board considered that the definition of the ingredients in claim 1 was not unclear.

The respondent's objection was based on the possibility that an ingredient fulfilled more than one function and, depending on its function, the amount of the compound in the composition could vary. For instance, polyvinyl alcohol was generally known to be a binder and a lubricant. If it was considered a binder, it could be present in an amount of 0.001 to 5% by mass while it could not be present if it was considered a lubricant.

The board disagreed. The fact that polyvinyl alcohol was known to be a binder and a lubricant did not render the claim unclear. If polyvinyl alcohol was present in the composition, it necessarily played the role of a binder, even if it also fulfilled the function of a lubricant. Therefore, it should be counted as a binder that may be present in an amount of 0.001 to 5% by mass in the composition. Considering arbitrarily that polyvinyl alcohol could function exclusively as a lubricant and that therefore its presence would render the composition different from the one in claim 1 would be unrealistic. Certainly this was not how the skilled person would read the claim.

Moreover, the board stated that the fact that "excipient" was a very broad term did not mean that it was unclear. "Excipient" was a standard term in pharmaceutical formulations.

Résumé

In T 1208/21 the board rejected the respondent's (patent proprietor's) approach of a limited interpretation of the expression "gas turbine blade" in claim 1 in the light of the description.

The board held that according to the commonly accepted approach on claim interpretation by the boards of appeal, when assessing inter alia the patentability requirements of Art. 54 and 56 EPC a claim which is clear by itself should be interpreted as broadly as technically reasonable in the relevant technical field (see T 1628/21, T 447/22). As to the extent to which the description and the figures of the patent have to be taken into account for interpreting the wording of a claim, the board agreed with the principles set out in decisions T 1628/21 and T 1473/19.

Moreover, the board noted that the description of the patent in suit did not lead to a different conclusion either. The description of the patent as granted stated: "Generally, the gas turbine blade according to the present invention is not restricted to a gas turbine: rotor blades or guide vanes of a turbo-machinery fall legally under the present invention". Correspondingly, granted claim 13 was directed to a blade suitable for use as a rotor blade or guide vane for turbo-machinery. This confirmed that the patent itself considered the term "blade" in claim 1 to cover rotating and stationary blades (vanes) as well as their use in turbo-machinery in general, thus not limited to the turbine section of a gas turbine.

Although the description and the claims had been amended in auxiliary request 3 by deleting these statements of the granted patent, such an amendment of the description did not constitute a limitation of the claimed subject-matter. The board stated that, in analogy to the situation underlying decision T 454/89, in which it was held that a lack of clarity in a claim could not be cured by relying on Art. 69 EPC as a replacement for the Art. 84 requirements, i.e. as a substitute for an amendment which would be necessary to remedy a lack of clarity, also in the context of the requirements of Art. 54 and 56 EPC, a technically reasonable and not illogical understanding of the claim wording could not be restricted by reference or an amendment to the description. In such a situation, it would, rather, be the claim wording that would require amendment (see T 1628/21).

Résumé

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]

Résumé

In T 2030/20 befasste sich die Kammer mit der Auslegung der Begriffe "Tauchrohr" und "eines Durchmessers" in Anspruch 1 im Rahmen der Neuheitsprüfung.

Die Patentinhaberin wollte den Begriff "Tauchrohr" in Anspruch 1 des erteilten Patents im Sinne des unmittelbaren Wortsinns verstanden wissen, wonach das Rohr dazu geeignet sein solle, in ein Kulturmedium einzutauchen. Ein Tauchrohr müsse demnach insbesondere lang genug ausgebildet sein, um das Kulturmedium, beispielsweise eine Flüssigkeit wie die Kulturbrühe oder ein Gel, eines angeschlossenen Einweg-Bioreaktors erreichen zu können.

Die Kammer merkte an, dass nach ständiger Rechtsprechung den in einem Patent verwendeten Begriffen die im einschlägigen Stand der Technik übliche Bedeutung zu geben sei, sofern ihnen nicht in der Beschreibung des Patents ein besonderer Sinn zugewiesen wurde (siehe Rechtsprechung der Beschwerdekammern, 10. Auflage 2022, Kapitel II.A.6.3.3; vgl. auch T 1473/19). Sei Letzteres der Fall, könne dies auch dazu führen, dass einem Anspruchsmerkmal gegenüber der im einschlägigen Stand der Technik üblichen Bedeutung im Lichte der Beschreibung eine breitere Bedeutung zukomme. Dies sei im vorliegenden Fall so.

Zwar sei es gemäß den in den Figuren dargestellten Ausführungsformen des Patents, wie von der Patentinhaberin dargelegt, bevorzugt, dass ein Tauchrohr des Patents dazu vorgesehen sei, in eine im Bioreaktor bestimmungsgemäß vorhandene Kulturbrühe einzutauchen. Allerdings weise das Patent dem Begriff "Tauchrohr" in der Beschreibung eine über den eigentlichen Wortsinn hinausgehende, breitere Bedeutung zu, wonach ein Tauchrohr lediglich in den Reaktionsraum ragen könne, also irgendwo innerhalb des Reaktionsraums oberhalb des Flüssigkeitsspiegels enden könne.

Die vorgenommenen Änderungen im Hilfsantrag 1 betrafen die Beschreibung der Tauchrohre in Absätze 46 und 60. Die Kammer war jedoch der Ansicht, dass die unverändert belassenen Absätze der Patentschrift weiterhin definierten, dass die Tauchrohre im Sinne des Patents lediglich lang genug ausgebildet sein müssten, um in den Reaktionsraum zu ragen.

Im Hilfsantrag 4 wurde folgendes Merkmal ergänzt: "und wobei die Tauchrohre eine Länge von über 50 Prozent eines Durchmessers der Kopfplatte aufweisen". Von den Beteiligten wurde diskutiert, was unter "eines Durchmessers" zu verstehen sei.

Nach Ansicht der Kammer müsse die Wortfolge "eines Durchmessers" im Gesamtzusammenhang des Anspruchs und der Patentschrift (T 367/20) als Maß für die Ausdehnung der Kopfplatte, also als Maß für ihren Gesamtdurchmesser, verstanden werden. Bei nur isolierter Betrachtung des Wortlautes von Anspruch 1 bestehe eine technisch sinnvolle Auslegung der Wortfolge "eines Durchmessers" darin, dass der Fachmann sich bei der Definition der Länge der Tauchrohre im Bezug auf die Kopfplatte an der für die Kopfplatte charakterisierenden Größe des Gesamtdurchmessers orientiere – und nicht an dem Durchmesser lediglich eines Teiles der Kopfplatte, welcher für die Größe der gesamten Kopfplatte nicht repräsentativ sei. Sollte ein Fachmann nichtsdestotrotz Zweifel daran haben, welche Bedeutung dem Begriff "eines Durchmessers" in Anspruch 1 zukomme, würde er die Beschreibung des Patents konsultieren. Die Patentschrift stütze das o.g. Verständnis der Wortfolge "eines Durchmessers".

Résumé

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.