The Enlarged Board of Appeal highlights that the claims are the starting point and the basis for assessing the patentability of an invention and concludes that the description and any drawings must always be consulted to interpret the claims for this assessment and that this requirement is independent of whether the skilled person finds a claim to be unclear or ambiguous when read in isolation.

Background

This decision relates to a referral from T0439/22, an appeal against the EPO’s Opposition Division decision to maintain Philip Morris Products SA’s patent EP3076804 B1 as granted.

The patent relates to an article for a “heat not burn” vaping device comprising an aerosol-forming substrate comprising a “gathered sheet” of material (tobacco). The prior art disclosed a spirally wound tobacco sheet. The patent proprietor argued in the appeal that if the term “gathered sheet” is assigned its usual meaning in the art, claim 1 is novel. However, the opponent argued that if the term is interpreted in the light of the description, then it would have a broader meaning and claim 1 would lack novelty. Thus, the key issue was whether the definition provided in the description of the patent should prevail.

In view of diverging case law on claim interpretation, the Board of Appeal referred the following three questions.

1. Is Article 69(1) [see note 1 below], second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC [see note 2 below] to be applied on the interpretation of patent claims when assessing the patentability of an invention under Articles 52 to 57 EPC?
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?
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?

Decision of the Enlarged Board of Appeal

The Enlarged Board of Appeal considered that question 1 relates to the legal basis for interpreting patent claims. It concluded that neither Article 69 EPC and Article 1 of the protocol, nor Article 84 EPC [see note 3 below] are satisfactory as a basis for claim interpretation when assessing patentability.

With regard to Article 69 EPC and the Protocol it noted that these provisions are arguably only concerned with infringement actions before national courts and the UPC. It reached this conclusion in view of the history behind the drafting of Article 69 and the Protocol and the position of Article 69 within Chapter III of the European Patent Convention which is headed “Effects of the European patent and European patent application”.

In connection to Article 84 EPC, the Enlarged Board of Appeal noted that it does not mention the invention and provides no guidance on how to interpret claims. It held that it only sets out an instruction to the drafter of what needs to be in the claims and an instruction to the EPO to determine whether the claims meet that purpose.

The Enlarged Board of Appeal held there is no clear legal basis for claim interpretation when assessing patentability and, thus, the answer to question 1 is “No”. However, it went on to note that there is an existing case law from which the following principles of claim interpretation can be extracted:

1. The claims are the starting point and the basis for assessing the patentability of an invention under Articles 52 to 57 EPC.
2. The description and any drawings are always referred to when interpreting the claims, and not just in the case of unclarity or ambiguity.

The Enlarged Board of Appeal considered that point 1 is settled and that it is point 2 which gave rise to diverging case law.

The Enlarged Board of Appeal highlighted that referring to the description only in cases where the claims are unclear or ambiguous is contrary to: (a) the wording and principles of Article 69 EPC; (b) the practice of national courts of the EPC states; and (c) the practice of the UPC. The Enlarged Board of Appeal went on to further state that it would be a “most unattractive proposition” for the EPO to deliberately adopt a practice contrary to that of downstream tribunals.

The Enlarged Board of Appeal held that, in answer to question 2, the description and any drawings are always referred to when interpreting claims and not only if a person skilled in the art finds a claim to be unclear or ambiguous when read in isolation. The Enlarged Board of Appeal acknowledged that the case law of the UPC in NanoString Technologies v 10x Genomics (UPC CFI 2/2023) is consistent with this conclusion.

The Enlarged Board of Appeal considered that question 3 was encompassed within question 2 so it did not admit this question.

Takeaways & practice points

It is notable that the wording of this decision closely mirrors that in UPC CFI 2/2023 [see note 4]. It seems the EPO has taken a practical approach in this decision by deciding to harmonise, at least on claim interpretation, with downstream tribunals, in particular the UPC. It is thought that this decision will lead to greater harmony between oppositions and appeals at the EPO and invalidity proceedings in national courts and the UPC.

In light of this decision, any party when assessing the patentability of claims of a given application or patent, needs to consult the description rather than simply accepting the terms in the claims as they initially appear. There is no specific guidance in the decision on how, in practice, claims should be interpreted following the consultation, but the decision refers to the existing body of case law from which the principles of claim interpretation can be extracted.

Notably, the decision does not say that the description must be taken into account. This could be because the decision is reflecting the language of the questions posed. However, some commentators argue this leaves the potential for the description to be consulted and disregarded in some circumstances. It remains to be seen whether the Boards of Appeal follow a single approach or if diverging approaches emerge; and one eagerly awaited decision, assuming they appoint further oral proceedings, will be that of the Board of Appeal in T0439/22.

When drafting the description, this decision highlights the need for applicants to ensure that any definitions are consistent with how the claims should be defined. Caution should be taken when including definitions of terms that may differ from a commonly understood meaning in the art.

Further, applicants need to take care when amending the description to bring it into conformity with the claims; any addition to or deletion from the description should be carefully assessed for its implications on the interpretation of the claims.

The decision encourages examiners to use the description to interpret terms used in the claims. It remains to be seen how this will be implemented in practice. However, there is speculation that it could lead to an increase in the number of clarity objections.

In connection to oppositions, parties should continue to consider the impact on claim definitions of any definitions in the description and how any amendments to the description might affect claim interpretation.

It remains to be seen how this decision might affect the developing case law in respect of the requirements to amend the description in line with the claims. There is possible further referral to the Enlarged Board of Appeal on this issue (T269/22).

Notes

1. Article 69 EPC: “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”.
2. Article 1 of the protocol: “Article 69 should not be interpreted as meaning that the extent of the protection conferred by a European patent is to be understood as that defined by the strict, literal meaning of the wording used in the claims, the description and drawings being employed only for the purpose of resolving an ambiguity found in the claims. Nor should it be interpreted as meaning that the claims serve only as a guideline and that the actual protection conferred may extend to what, from a consideration of the description and drawings by a person skilled in the art, the patent proprietor has contemplated. On the contrary, it is to be interpreted as defining a position between these extremes which combines a fair protection for the patent proprietor with a reasonable degree of legal certainty for third parties”.
3. Article 84 EPC: “The claims shall define the matter for which protection is sought. They shall be clear and concise and be supported by the description.”
4. UPC CFI 2/2023: “The interpretation of a patent claim does not depend solely on the strict, literal meaning of the wording used. 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.”