Questions relating to interpretation of claims under Art. 69 EPC referred to Enlarged Board of Appeal

03 July 2024
In T0439/22, published on 1 July 2024, the Board of Appeal decided to refer questions whether the description and the claims should be taken into account for interpretation of the claims to the Enlarged Board of Appeal. It is expected that the outcome of this referral will have a major impact on the future interpretation of claims of EP patents not only before the EPO, but also before the UPC and the national courts.

The decision T0439/22 relates to granted European patent No. 2 307 6804 of Philipp Morris Products S.A., that has been opposed by Yunnan Tobacco International Co. In the decision, novelty of the subject-matter of claim 1 depends on the interpretation of the term “gathered sheet”. When interpreted on its own, given its usual meaning in the art, novelty is assumed whereas if the term is interpreted by referring to the definition in the description, claim 1 lacks novelty.

Now, in the past, there has been diverging case law at the EPO . Some decisions follow the line that claims should be given their normal meaning in the relevant art unless the description provides a special definition (i.e. the patent is its “own dictionary”). Other decisions have followed the principle of primacy of the claims over the description, while yet other decisions stipulated that the description should always be taken into account.

Interestingly to note is that T0439/22 also referred to national case law in France, Germany and the UK and the first case law at the UPC. In particular, the German approach (as first laid out in cited BGH decision “Spannschraube”) is that a patent application is its own dictionary.
Furthermore, the fundamental criteria of claim interpretation have been recently laid out by the UPC’s Appeal Court on February 26, 2024, with the order in the proceedings for provisional measures concerning EP 4 108 782 between NanoString and 10x Genomics (UPC_CoA_335/2023).These fundamental criteria are in line with the German approach.

As both, UPC and EPO, decide on validity of EP patents, a decision by the Enlarged Board of Appeal deviating from the UPC’s approach would obviously not be very helpful for all parties involved. In fact, this would lead to a situation similar to the infamous " inescapable trap" where an EP patent would survive German invalidity proceedings but not an opposition before the EPO, making it a kind of gamble whether an EP patent will prove valid or not.

However, this cannot be “im Sinne des Erfinders” (if you allow me this German pun).

The questions referred to the Enlarged Board of Appeal are:

• Is Article 69 (1), second sentence EPC and Article 1 of the Protocol on the Interpretation of Article 69 EPC to be applied on the interpretation of patent claims when assessing the patentability of an 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?

See T0439/22:
https://www.epo.org/en/boards-of-appeal/decisions/t220439eu1

See also the notice from the president of the EPO concerning continuation of examination and opposition proceedings:
https://www.epo.org/en/legal/official-journal/notice-european-patent-office-dated-1-july-2024-concerning-continuation-examination-and-opposition

Disclaimer: The above contribution reflects the personal opinion of the author. The assessments and statements made in the article do not constitute legal advice and are provided under exclusion of any liability. If you need an assessment of an individual case, please contact the author and/or the law firm KUHNEN & WACKER.