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The Enlarged Board of Appeal (EBA) has issued a decision which settles a longstanding debate around how patent claims should be interpreted when assessing patentability at all levels of the European Patent Office (EPO).
In brief, the Board has found that:
- the claims are the starting point and the basis for assessing the patentability of an invention, and
- the description and drawings must always be consulted to interpret the claims for this assessment.
This brings the EPO’s approach to claim interpretation into line with that of the national courts and the Unified Patent Court (UPC) in Europe. In this article, Michael Ford explores this decision further.
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Legal background
There has been a long-running debate in Europe regarding whether, and to what extent, the description and drawings of a patent should be used as an aid when interpreting the meaning of patent claims.
While this may seem like an issue of fundamental importance to patent law, it is not addressed directly in the European Patent Convention.
It is true that Article 69(1) EPC states: The extent of the protection conferred by a European patent or a European patent application shall be determined by the claims. Nevertheless, the description and drawings shall be used to interpret the claims.
Article 1 of the Protocol on the Interpretation of Article 69 EPC also mandates that the extent of protection is to be interpreted as defining a position between extremes of (a) relying on the strict, literal meaning of the wording used in the claims (with the description and the drawings being employed only for the purpose of resolving an ambiguity) and (b) treating the claims only as a guideline, with the actual protection being determined, from the description and drawings, as what the patent proprietor had contemplated.
However, the “extent of protection” in Article 69 EPC is understood to refer to the scope of protection which national courts or the UPC can enforce in an infringement action. It does not necessarily concern the scope of the patent claim for the assessment of novelty or inventive step.
In addition, Article 84 EPC states: The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.
Some have understood this to mean that the scope should be determined solely by the wording of the claims when assessing patentability. However, Article 84 EPC does not mention “the invention” or provide any guidance as to how claim wording should be interpreted in practice.
The legal basis for the interpretation of claims when assessing patentability is thus, at best (and ironically), rather unclear.
Unsurprisingly, therefore, different lines of case law have arisen at the EPO. According to one line, the description and the drawings can always be used to interpret the claims. According to another line, there is no need to refer to the description and drawings unless a claim is considered unclear or ambiguous.
T 439/22
The conflict between these two lines of case law came to a head in Technical Board of Appeal decision T 439/22.
In this case, the novelty of a granted patent claim turns on the meaning of the term “gathered sheet”. If the term is interpreted based solely on the wording of the claims, giving it the well-known meaning it already has in the field of cigarettes, the claim should be considered novel over the available prior art. However, if the term is interpreted more broadly based on a definition provided in the description, the claim should be considered to lack novelty.
Unable to resolve this problem based on the existing case law, the Technical Board asked the Enlarged Board of Appeal to clarify:
- whether the principles of Article 69 EPC and the associated Protocol should be applied when interpreting patent claims for the assessment of patentability;
- whether the description and drawings can be consulted when interpreting the claims to assess patentability and, if so, whether this is only if a claim is unclear or ambiguous; and
- whether the definition of a term provided in the description can be disregarded when interpreting the claims to assess patentability.
Enlarged Board of Appeal’s Decision
The EBA reviewed the extensive discussion of the case law provided by the Technical Board of Appeal and identified two key principles of claim interpretation:
- The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC.
- The description and any drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity when the claims are read in isolation.
The Board considered these principles to be aligned with both the intention of Article 69 EPC and the practice of the European national courts and the UPC, expressing support for the “harmonisation philosophy” behind the EPC itself.
The Board also commented that these principles highlight the importance of the EPO carrying out a high quality examination of claim clarity prior to grant. According to the Board, the correct approach to any unclarity in a claim is amendment.
Implications
This decision has immediate implications for the referring case T 439/22, in which it appears that the term “gathered sheet” should be interpreted in light of the definition provided in the description of the patent.
There will, of course, also be many other pending European patent applications, as well as granted European patents undergoing opposition and appeal proceedings, where key issues of patentability hinge on the correct interpretation of the claims. How this decision impacts those cases will depend on the particular facts and, perhaps, whether the meaning gleaned from the description is broader or narrower than the claim language when read in isolation. Nevertheless, the general principles to be applied are now much clearer and there will be no room for Examiners, Proprietors or Opponents to argue that the description need not be consulted.
Finally, there is a question about how this will affect the Examining Division’s approach to clarity and description amendments. The EBA has stressed the need for a high-quality examination of clarity, including the amendment of claims to remove any unclarities. The Board, however, did not mention the oft-disputed requirement that the description be amended before grant to bring it into line with allowable claims so as to avoid any “inconsistencies” which may cast doubt on the scope of protection. The President of the EPO had previously requested the Enlarged Board to consider this issue at the same time. Nevertheless, at least one Technical Board of Appeal (in appeal proceedings T 697/22) appears to be considering referring its own questions on this very topic to the EBA later this year, so watch this space!
Need assistance?
This is for general information only and does not constitute legal advice. Should you require advice on this or any other topic then please contact hlk@hlk-ip.com or your usual HLK advisor.