Ensure that the description and drawings support the claim scope you want.
I cannot emphasise enough the role good drafting practice plays in ensuring that your European patent is fit for litigation at the UPC, especially ensuring that the description and drawings of your application support the claim scope you want to achieve.
Real life example
In the very first UPC Court of Appeal case, Nanostring’s appeal against the UPC Court of First Instance Decision to grant a preliminary injunction to 10X Genomics[1], the UPC Court of Appeal outlined the UPC’s approach to claim interpretation, saying:
“The patent claim is not only the starting point, but the decisive basis for determining the protective scope of a European patent. The interpretation of a patent claim does not depend solely on the strict, literal meaning of the wording used.”
The part you really need to take notice of, follows next:
“Rather, the description and the drawings must always be used as explanatory aids for the interpretation of the patent claim and not only to resolve any ambiguities in the patent claim.”
This approach has been followed by the Courts of First Instance in the decisions on the merits that we’ve seen so far.
Preferred interpretation of claim features
The point here is that, as the Court will always look to the description and drawings when interpreting the claims of your patent, you need to take extra care in the initial drafting of your patent application to ensure that the description and drawings support your preferred interpretation of the claims, leaving as little room for argument as possible.
My advice on this point is to make sure there is plenty of support in the description and drawings of your European patent application for your preferred interpretation of your claim features.
If you want a claim feature to be interpreted as having a particular meaning, consider including an explicit definition of that feature in the description. For a broad interpretation of a claim feature, include lots of examples of the feature that fall within the broad interpretation you’re aiming for.
There is possibly a tension here that you should be aware of during prosecution. This relates to the EPO’s current practice of requiring applicants either to remove from the description examples that don’t fall within the scope of the allowed claims, or to amend the description to make it clear that such examples don’t form part of the claimed subject matter.
Given the UPC’s approach to claim interpretation, I would advise caution over explicitly disclaiming or deleting examples from your description, if those examples support a broad interpretation of a claim or claim feature.
If an example has been deleted, or there is a statement to the effect that an example doesn’t fall within the scope of the claims, the UPC is likely to adopt a narrower and potentially less favourable interpretation of your claims than would otherwise be the case.
Remember that you can push back against EPO Examiners on the need to adapt the description to the scope of the allowed claims if you need to, for example by citing relevant case law from the EPO’s Technical Boards of Appeal.
