IP Cases & Articles

UPC v EPO: a comparison of claim construction approaches

In the last year claim construction has been a topic of debate for both the UPC and the Boards of Appeal at the EPO. This article looks at the evolution of the approaches taken in recent decisions at the UPC and EPO.

Claim interpretation at the EPO is defined by Article 69 of the European Patent Convention (EPC), which states the extent of the protection conferred by a European patent shall be determined by the claims, but the description and drawings shall be used to interpret the claims.

In contrast to the EPO, Article 24(1) of the UPC Agreement stipulates that the UPC shall base its decisions on inter alia EU law, the EPC, other international agreements applicable to patents and binding on all the contracting member states, and national law.

Recent UPC decisions have provided some insight as to how much weight the UPC is giving to the EPC over other legal precedents.

Recent EPO decisions

Although claim construction has been considered by the Boards of Appeal at the EPO since its inception, in recent years there has been an apparent divergence in case law.

In T 1473/19, the Board of Appeal held that Article 69 EPC was the only provision in the EPC containing rules for the interpretation of claims, and that the description and the drawings provide context-specific information about the claimed subject-matter. It referred to earlier decisions which set out that the claims must be interpreted in the context of the document as a whole, but added that only the claims determine the extent of protection, and therefore it cannot be deduced that the description has the same weight as the claims.

The EPO Board of Appeal decided that an interpretation of a feature in the claim could not be dismissed simply because it was not disclosed in the description or drawings, provided the interpretation was not nonsensical or incompatible with the remaining claim features.

Conversely, in T 169/20, the Board of Appeal disagreed with the premise that Article 69 EPC was the only provision in the EPC containing rules for the interpretation of claims; it instead considered Article 84 (claims) and Rules 42 and 43 EPC (content of the description, and form and content of the claims, respectively) provide guidance on how to interpret the claims.

In particular, the Board of Appeal considered the requirement of Article 84 EPC that the claims be “supported by the description” provides legal basis for determining how and when the claims should be interpreted in light of the description, namely that this explicitly limits the role of the description to aid understanding of the claims in exceptional cases where clarity or technical explanations of the subject matter is required, rather than to limit the scope of the claims.

This difference in approach was highlighted in T 439/22, where the novelty of claim 1 hinged on whether the term “gathered sheet” should be interpreted in light of a paragraph of the description or from the wording of the claim alone. In the decision under appeal, the opposition division did not accept the opponent’s arguments that reference should be made to the description. The opponent argued the description teaches that a gathered sheet implies a sheet that is “convoluted, folded or otherwise compressed” and therefore encompasses any sheet that is deformed substantially perpendicularly to the axis normal to its surface, such as the rolled sheet of D1. The opposition division disagreed, believing that “gathered” should be interpreted based on claim language with reference to the term’s meaning “widely used in the tobacco industry” in line with T 169/20, and therefore found claim 1 to be novel over D1.

Although the EPO Board of Appeal hasn’t published its decision, it confirmed in the minutes of the oral proceedings that it will refer the question of whether content in the description should be used to interpret the claims to the Enlarged Board of Appeal.

Recent UPC decisions

One of the first decisions from the UPC to consider claim construction was SES Imagotag SA v Hanshow Technology Co Ltd et al (UPC_CFI_292/2023).

Rather than starting from Article 69 EPC the Munich local division looked at the file history, in particular the original version of the claims in order to interpret the granted claims, stating the original claims “can be used as an interpretation aid in connection with changes made in the granting process.” The original claims had a spatial arrangement between a printed chip and an antenna arranged on a circuit board.

From reviewing the prosecution history, the court considered that amendments to the claim were made to clarify the technical effect provided by this feature, rather than to broaden it to cover other arrangements of the antenna on the circuit board, such as the one on the allegedly infringing articles.

In NanoString Technologies Inc v 10x Genomics Inc (UPC_CoA_335/2023), in one of its first substantive decisions, the Court of Appeal used Article 69 EPC as a starting point, stating the patent claim is not only the starting point, but also the decisive basis for determining the scope of protection.

Rather than relying solely on the strict literal meaning of the claim terms, the court ruled the description and drawings must always be used as explanatory aids for interpretation, not just to resolve any ambiguities in the claim language. Only after examination of the description and drawings does the scope of the claims become apparent.

The court confirmed the patent should be interpreted from the point of view of the person skilled in the art, and that the aim of applying these principles is to combine adequate protection for the patent proprietor with sufficient legal certainty for third parties.

It also set out that these principles of claim interpretation apply equally to the assessment of infringement and validity. By applying these principles it disagreed with the Court of First Instance’s interpretation of the patent claim, taking a broader interpretation of the claims to find fewer features of claim 1 to be novel over D6.

Following this decision, the Court of Appeal heard the case of SES Imagotag SA v Hanshow Technology Co Ltd et al (UPC_CoA_1/2024) following SES Imagotag SA’s appeal of the decision discussed. In the recently published decision the Court of Appeal applied the principles set out in NanoString Technologies Inc v 10x Genomics Inc. From reviewing the description the Court of Appeal concluded that, although it was taught the chip and the antenna could be arranged in different positions on or in the electronic label, disadvantages of positioning them on the same surface or positioning the antenna on the back next to the chip were disclosed. Although applying a different approach, the Court of Appeal agreed with the Court of First Instance’s conclusion that the claims require a spatial separation between the printed chip and the antenna.

Divergences between the EPO and UPC

The recent decisions of the UPC Court of Appeal put more emphasis on use of the description in claim interpretation than at the EPO. As evidenced in these two decisions, however, this does not necessarily result in a broader interpretation of the claims.

Although in SES Imagotag SA v Hanshow Technology Co Ltd the Court of Appeal applied a different approach to claim construction than the Munich local division, it arrived at the same conclusion. This is partly because, although the Munich local division considered the file history, the technical effect proposed during examination was derived from the description, and therefore the local division did, indirectly, consider the description in coming to its decision.

If the description mentions a disadvantage of a particular feature or arrangement this can apparently give rise to an interpretation at the UPC of it falling outside the claim scope, particularly where the disadvantage is contrary to the technical effect achieved by the claimed feature.

In contrast, the EPO’s approach provides for a broader interpretation, provided the disadvantageous arrangement is not incompatible with other features in the claim.

In view of above decisions by the UPC Court of Appeal the opponent’s arguments in T 439/22 may have been more persuasive if the case were heard at the UPC given the definition of “gathered sheet” provided in the description. The imminent referral to the Enlarged Board of Appeal will hopefully provide clarity on the EPO’s approach to claim interpretation, and we await with interest as to whether any reference is made to the recent UPC decisions on this matter.

EPO case details at a glance

T 1473/19: Schleifring GmbH v Siemens Healthcare GmbH, EPO Boards of Appeal, 30 September 2022: dycip.com/epo-t-1473-19

T 0169/20: Reckitt Benckiser Vanish BV v Henkel AG & Co KGaA, EPO Boards of Appeal, 13 January 2023: dycip.com/epo-t-016920

UPC case details at a glance

Decision level: Court of Appeal, Luxembourg
Case: UPC_CoA_335/2023
Order/decision: ORD_595990/2023 (26 February 2024) & ORD_12169/2024
Parties: Nanostring Technologies (Inc, Germany GmbH & Netherlands BV) v President and Fellows of Harvard College, 10x Genomics Inc
Date: 11 March 2024
Decision: dycip.com/nanostring-10x-coa

Decision level: Munich Local Division
Case: UPC_CFI_292/2023
Order/decision: ORD_596193/2023
Parties: SES-imagotag SA v Hanshow Technology Co Ltd et al
Date: 20 December 2023
Decision: dycip.com/upc-cfi-292-2023

Decision level: Court of Appeal, Luxembourg
Case: UPC_CoA_1/2024
Order/decision: ORD_17447/2024
Parties: SES-imagotag SA v Hanshow Technology Co Ltd & Ors
Date: 13 May 2024
Decision: dycip.com/upc-coa-1-2024

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