An EPO Board of Appeal has requested clarification from the Enlarged Board of Appeal concerning how the claims of a patent or application are to be interpreted, particularly whether and to what extent the description and figures may be used.
THE FACTS AND THE ARGUMENT
The case in question (T0439/22) is an appeal from the decision of the EPO’s Opposition Division to maintain Philip Morris Product’s European patent no. 3076804 as granted.
The patent relates to a cartridge for a smoking device that includes “gathered” smoking material, such as tobacco. The Board of Appeal considered that the definition of the term “gathered” provided in the description of the patent was broader than that normally used in the technical field, since it additionally covered materials that were “convoluted, folded, or otherwise compressed or constricted”. The prior art cited for novelty discloses subject matter that would anticipate the claims based on the broader definition of “gathered”, but not on the narrower definition. The interpretation of the term “gathered”, specifically whether the definition provided in the description of the patent should prevail, is therefore critical for the determination of this point of novelty.
JUDGMENT
The Board of Appeal has now issued its interlocutory decision in which it has explained the divergence in several areas of EPO jurisprudence. Specifically, the Board has highlighted divergence in the legal basis for construing claims; whether a patent claim must be shown to be unclear or ambiguous on its face before the figures and description can be taken into account to construe that claim; and the extent to which a patent can serve as its own dictionary.
Given this divergence in jurisprudence and the importance of the issues involved, the responsible Board has considered it necessary to refer the following questions to the Enlarged Board of Appeal:
- Is Article 69(1), second sentence EPC and Article 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 the invention under Articles 52 to 57 EPC?
- 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?
- 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?
The Enlarged Board must first decide whether the referral is admissible, specifically whether the Board’s contention is correct that a decision is required to ensure uniform application of the law and/or that a point of law of fundamental importance has arisen. If the questions are admitted, the Enlarged Board may nevertheless rephrase them, as it has done previously when it considered them to be broader than justified by the case in question.
IMPLICATIONS
Since the claims of a patent determine the extent of protection, there can scarcely be a more important question to answer for both patentees and third parties. Any decision from the Enlarged Board of Appeal would, most likely, affect rights holders and third parties. This is not the first time that the EPO has grappled with this topic, and it remains to be seen whether the Enlarged Board feels the need to address these specific questions at all.
Should the referral be admitted, which the authors feel is far from certain, it is expected that the Enlarged Board will provide only high-level direction on claim interpretation, leaving it to the examiners and Boards of Appeal to apply the general principles to the specifics of each case. Such an outcome could open the door to non-uniform application of any new principle if the Enlarged Board does not provide adequate clarity on this crucial topic. The Enlarged Board will also be conscious of the rapidly increasing body of decisions issued by UPC judges, and will no doubt be keen to adopt an approach that strikes a common balance.
Furthermore, it has been expected for some time that there would be a separate referral to the Enlarged Board in an unconnected case concerning whether the EPO can or should continue to require that applicants amend the description of their applications for conformity with the claims (T56/21 relating to EP3094648; see our article). Similarly to the present case, the outcome of that case hinges on the relationship between the description and the claims, specifically whether and to what extent the former is used to interpret the latter. Although some practitioners are hopeful that a referral on description amendments in the near future would allow the Enlarged Board to holistically consider the issues involved in both cases, others suspect that the complexity of the issues are enough to encourage the Enlarged Board not to admit both the present and future referrals on these topics.
Although it is often expected that the EPO will allow proceedings to be stayed where the outcome of the Enlarged Board’s deliberations will be determinative to a case, the EPO has already issued a notice explaining that examination and opposition proceedings will continue to ensure the proper functioning of the EPO and for legal certainty.
